Kyocera Mita Corporation v. Lexel
Claim Number: FA0204000112432
Complainant
is Kyocera Mita Corporation, Osaka,
JAPAN (“Complainant”), of Schulte Roth & Zabel LLP. Respondent is Lexel, Rueil-Malmaison, FRANCE (“Respondent”).
The
domain name at issue is <mita.biz>,
registered with BookMyName.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 21,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On June 13, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Carolyn Marks Johnson
as the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
The
<mita.biz> domain name is identical to Complainant's MITA
mark. Respondent has no rights or
legitimate interests in the <mita.biz> domain name. Respondent registered the <mita.biz>
domain name in bad faith.
B.
Respondent did not submit a Response.
Complainant registered its MITA mark in
France as Registration Number 1,584,797 in 1988. Complainant uses the mark in relation to industrial chemicals for
photographs and photosensitive materials including paper, films, plates, and drums. Complainant also owns three other
registrations in France, as well as European Community Registration Number
39,537. Complainant registered its mark
with the United States Patent and Trademark Office as Registration Number
1,327,592 in 1985. Complainant also
owns eight other U.S. trademark registrations in the United States.
Complainant’s company is known
internationally as a producer of network-ready, multifunctional, document
imaging systems. Sales of Complainant’s
products in 2001 were approximately 1.4 billion dollars. Complainant also holds the registration for
<mita.com>.
Respondent registered the disputed domain
name on March 27, 2002. Complainant’s
investigation has revealed that Respondent is not doing business under the name
MITA or “Lexel.”
Paragraph 15(a) of the STOP 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 STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical 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 or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a disputed
domain name is not identical to the mark in which the Complainant asserts
rights.
Complainant
has established its rights to the MITA mark through Registration in France and
the United States. Respondent’s <mita.biz>
domain name is identical to Complainant’s MITA mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See 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”).
Respondent has not come forward with
evidence and no evidence in record suggests that Respondent owns any trademarks
or service marks for MITA or <mita.biz>. Without this information Respondent has failed to establish that
it has rights or legitimate interests in the disputed domain name pursuant to
STOP Policy ¶ 4(c)(i). See Nat’l
Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb.
Forum Feb. 11, 2002) (finding that, because Respondent did not come forward
with a Response, the Panel could infer that it had no trademark or service
marks identical to <grammy.biz> and therefore had no rights or legitimate
interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. &
D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights
or legitimate interests under the UDRP where no such right or interest is
immediately apparent to the Panel and Respondent has not come forward to suggest
any right or interest it may possess).
Based on the distinct and famous nature
of Complainant’s mark in France and the United States, any use of the disputed
domain name by Respondent will likely confuse Internet users as to the source,
sponsorship, and affiliation of <mita.biz>. It can be inferred that Respondent
registered the disputed domain name in order to use this confusion to attract
Internet users to its website. This
type of use is not considered to be a bona fide offering of goods or services
pursuant to STOP Policy ¶ 4(c)(ii). See
Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971
(Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract
users to Respondent's domain is not considered to be a bona fide offering of
goods or services pursuant to STOP Policy ¶ 4(c)(ii)”); see also Peachtree
Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding
that Respondent’s intended use of the <peachtree.biz> domain name to
provide information and services related to Complainant’s PEACHTREE product,
but without Complainant’s authorization, would cause customer confusion and was
not a bona fide offering of goods or services).
No evidence in this record suggests and
Respondent has not come forward to establish such evidence that it is commonly
known as MITA or <mita.biz>.
Therefore, Respondent has no rights or legitimate interests in the
disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in domain name when
Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Respondent’s knowledge of Complainant’s
rights in the MITA mark and Respondent’s lack of rights to the domain name,
permit the inference that Respondent registered the domain name to prevent
Complainant from reflecting its mark in another domain name. This type of behavior is evidence of bad
faith pursuant to STOP Policy ¶ 4(b)(ii).
See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb.
Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting
that it was reasonable to conclude Respondent registered
<peachtree.biz> with the intent to prevent Complainant from reflecting
its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge
of Complainant's mark and Respondent's lack of rights or interests in the
mark).
Furthermore, because of the famous and
distinctive nature of Complainant's MITA marks, Respondent is thought to have
been on notice of the existence of Complainant's mark at the time Respondent
registered the infringing <mita.biz> domain name. Registration despite knowledge of
Complainant’s rights is evidence of bad faith registration. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (evidence of bad faith includes actual or constructive knowledge of
commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constitutes bad faith).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <mita.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 27, 2002.
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