Sanyo Fisher Company, a division of Sanyo North America Corporation v. Martin Hur Investments c/o Sanyo Chair
Claim Number: FA0707001037684
Complainant is Sanyo Fisher Company, a division of Sanyo North
America Corporation (“Complainant”),
represented by Evan Finkel, of Pillsbury Winthrop Shaw Pittman LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <sanyochair.com>, registered with eNom.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 19, 2007.
On July 17, 2007, eNom confirmed by e-mail to the National Arbitration Forum that the <sanyochair.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 14, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sanyochair.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sanyochair.com> domain name is confusingly similar to Complainant’s SANYO mark.
2. Respondent does not have any rights or legitimate interests in the <sanyochair.com> domain name.
3. Respondent registered and used the <sanyochair.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sanyo Fisher
Company, a division of Sanyo North America Corporation, is licensed through its
parent company, Sanyo Electric Co. Ltd., to use and enforce several trademark
registrations held by Complainant’s parent company with the United States
Patent and Trademark Office (“USPTO”) for the SANYO mark (e.g., Reg. No.
1,529,332 issued March 14, 1989 and Reg. No. 824,045 issued February 14,
1967). Complainant has used the SANYO
mark since 1959 in connection with its international electronics company, which
spans across 27 countries and employs nearly 80,000 workers worldwide. Under the SANYO mark, Complainant has
manufactured and distributed various electronic goods and services, including
massage chairs, televisions, washing machines, DVD players, cellular phones,
air conditioners and LCD projectors.
Complainant has registered the <sanyo.com> domain name, which it
uses to promote its various goods and services.
Respondent registered the <sanyochair.com> domain name on August 28, 2002. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, which displays links to the websites of Complainant’s competitors where consumers can purchase competing goods, specifically massage chairs.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the SANYO mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (holding that where the complainant had several trademark registrations with the USPTO, “[t]he Panel had no difficulty in finding that Complainant has established rights in the marks for purposes of Policy ¶ 4(a)(i).”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <sanyochair.com> domain
name is confusingly similar to Complainant’s SANYO mark because it uses the mark
in its entirety and simply adds the descriptive word “chair” and the generic
top-level domain (“gTLD”) “.com” to the mark.
The word “chair” is descriptive as Complainant manufactures, designs and
sells massage chairs under the SANYO mark.
Additionally, Panels have previously held, as the Panel finds here, that
the addition of a gTLD is not relevant to determining whether a mark is
confusingly similar under Policy ¶ 4(a)(i). As such, the Panel finds that the addition of
the descriptive word “chair” and the addition of the gTLD “.com” does not
distinguish the disputed domain name sufficiently from the mark to avoid a
finding of confusing similarity under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat.
Arb. Forum Nov. 18, 2005) (holding that the addition of both the word
“advisors” and the gTLD “.com” did not sufficiently alter the disputed domain
name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Brambles Indus. Ltd. v. Geelong Car
Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain
name <bramblesequipment.com> is confusingly similar because the
combination of the two words “brambles” and “equipment” in the domain name
implies that there is an association with the complainant’s business); see also Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic
top-level domain (gTLD) name ‘.com’ is…without legal significance since use of
a gTLD is required of domain name registrants….”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <sanyochair.com> domain name. Complainant’s submission establishes a prima facie case, which shifts the
burden from Complainant to Respondent to show that Respondent does have rights
or legitimate interests in the <sanyochair.com> domain name under
Policy ¶ 4(a)(ii).
See
The Panel may assume that Respondent has no rights or legitimate interests here because Respondent failed to respond to the Complaint. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will review all available evidence before determining whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent
is using the <sanyochair.com> domain name to redirect Internet users
to Respondent’s website, which provides links for Internet consumers to
purchase goods from Complainant’s competitors similar to those goods sold by
Complainant under the SANYO mark.
Complainant contends that Respondent does not sell these products itself
as no order form exists on Respondent’s website, but rather Respondent provides
links to third-party competing websites based on the merchandise the Internet
consumer selects. The Panel finds that
such use by Respondent is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to
market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
Finally,
Respondent offers no evidence and no further evidence is present in the record
to indicate that Respondent is commonly known by the <sanyochair.com> domain
name beyond that Respondent’s WHOIS information identifies Respondent as
“Martin Hur Investments c/o Sanyo Chair.”
While Respondent's WHOIS information thus appears to suggest that
Respondent is known by the <sanyochair.com> domain name, the
Panel finds that there is no affirmative evidence indicating that Respondent is
in fact commonly known by the disputed domain name and, therefore, the evidence
available is insufficient to establish rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(ii).
The Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <sanyochair.com> domain name, which is confusingly similar to Complainant’s SANYO mark, to redirect Internet users to Respondent’s website, which provides links to Complainant’s competitors that offer goods similar to those sold by Complainant under the SANYO mark. The Panel finds that Respondent’s conduct constitutes a disruption of Complainant’s business, which the Panel finds is evidence of bad faith under Policy ¶ 4(b)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that respondent’s use of the disputed domain name to display links to services in competition with Complainant constituted disruption under Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Further, Respondent is using the <sanyochair.com> domain
name to redirect Internet users to Respondent’s website for the assumed profit
of Respondent. The Panel finds that
Internet users seeking Complainant’s goods and services may become confused as
to the affiliation, sponsorship, and endorsement by Complainant of Respondent’s
website. Presumably, Respondent is
profiting from this confusion through click-through-fees. Therefore, the Panel finds that Respondent’s
use of the <sanyochair.com> domain name is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website
is <century21.com>, many Internet users are likely to use search engines
to find Complainant’s website, only to be mislead to Respondent’s website at
the <century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sanyochair.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 28, 2007
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