Sanrio Company Ltd. v. Impresa.Inc.
Claim Number: FA0204000112477
Complainant
is Sanrio Company Ltd., Toyko, JAPAN
(“Complainant”) represented by Bonnie J.
Barnish, of Owen Wickersham &
Erickson. Respondent is Impresa.Inc., Tokyo, JAPAN
(“Respondent”).
The
domain name at issue is <hellokitty.biz>,
registered with Dotster.
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 7, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
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 25, 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:
1. Respondent’s <hellokitty.biz> domain
name is identical to Complainant’s registered HELLO KITTY mark.
2. Respondent has no rights or legitimate
interests in the <hellokitty.biz> domain name.
3. Respondent registered the <hellokitty.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant owns numerous U.S. Federal
Trademark Registrations with the U.S. Patent and Trademark Office (“USPTO”) for
its HELLO KITTY mark, namely, Reg. No. 1,215,436 registered on November 9, 1982
and Reg. No. 1,279,486 registered May 29, 1984, among others. Complainant also
owns 187 trademark registrations for its HELLO KITTY mark in Japan and holds
numerous other registrations worldwide.
Complainant’s HELLO KITTY mark represents
one of the most recognized characters in the world. Complainant’s mark was
introduced in 1975, and due to the popularity of the HELLO KITTY mark, Complainant’s mark has been compared to the
American icon Mickey Mouse. Complainant has a HELLO KITTY theme park near
Tokyo, where Respondent is domiciled, which attracts 1.4 million visitors a
year.
Respondent registered the contested
domain name on March 27, 2002 and has yet to develop a use for the domain name.
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 the 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 the 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
established in this proceeding that it has rights in the HELLO KITTY mark
through trademark registration with the USPTO and other countries’ trademark
registrars, and Complainant’s continuous subsequent use.
The
domain name registered by Respondent, <hellokitty.biz>, is
identical to Complainant’s mark because the domain name incorporates
Complainant’s mark in its entirety and the deletion of a space fails to make
the domain name distinct from Complainant’s mark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent did not come forward with a
Response. Therefore, it is presumed that Respondent has no rights or legitimate
interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response, the Panel is permitted
to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Respondent has not come forward to
proffer any evidence that it has rights in the HELLO KITTY mark anywhere in the
world. Further, since Complainant created the significance in its HELLO KITTY
mark, it is unlikely that Respondent could show rights in such a unique and
distinct mark. Respondent has not come forward to suggest that it has any
established rights or legitimate interests in the <hellokitty.biz> domain
name and under STOP Policy ¶ 4(c)(i) Respondent has no such rights. 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).
Due to the lack of a Response, it may be
inferred that Respondent intends to use the domain name in order to divert
Internet users interested in Complainant’s services or products to Respondent’s
future website. Thus, Respondent’s registration of <hellokitty.biz>
is not in connection with a bona fide offering of goods or services under 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 William L. Lyon & Assocs., Inc. v. Yata, FA
103043 (Nat. Arb. Forum March 21, 2002)
(finding the Respondent’s “intent to trade [on] the goodwill of
Complainant’s mark, by attracting Internet users confused as to the likely
affiliation between Complainant and Respondent’s website” indicated the
Respondent had no rights or legitimate interests pursuant to STOP Policy ¶
4(c)(ii)).
Furthermore, no evidence on the record
suggests and Respondent has not come forward to establish that it is commonly
known by the <hellokitty.biz> domain name pursuant to STOP Policy
¶ 4(c)(iii). See Nike, Inc. v. B.
B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or
legitimate interests where one “would be hard pressed to find a person who may
show a right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Complainant’s HELLO KITTY mark
represents an internationally recognized symbol. Complainant’s mark benefits from the protection provided by
the 187 trademark registrations it holds in Japan, Respondent’s domicile. Due
to the aforementioned circumstances and the nature of STOP proceedings,
Respondent is thought to have been on notice of the existence of Complainant’s
HELLO KITTY mark. Respondent’s subsequent decision to register an infringing
domain name despite knowledge of Complainant’s prior rights in the HELLO KITTY
mark represents bad faith registration and use under STOP Policy ¶ 4(a)(iii). See
Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was
on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed
domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed
domain name despite this notice when Respondent had no right or legitimate
interest in the domain name is evidence of bad faith”).
The domain name registered by Respondent, <hellokitty.biz>,
is identical to Complainant’s established HELLO KITTY mark resulting in the
likelihood that Internet users will believe that there is some affiliation
between Respondent and Complainant; notwithstanding the fact that Respondent
had no authorization to make use of Complainant’s mark. Registration and
eventual use of the <hellokitty.biz> domain name are evidence of
bad faith pursuant to STOP Policy ¶ 4(b)(iv). Respondent’s use of the disputed
domain name will likely be to attract unsuspecting Internet users seeking
Complainant’s website and products thereby benefiting from the goodwill
associated with Complainant’s mark. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith under UDRP ¶4(b)(iv) even though Respondent had not used the
domain name because “It makes no sense whatever to wait until it actually
‘uses’ the name, when inevitably, when there is such use, it will create the
confusion described in the Policy”); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding
that Respondent’s expected use of the domain name <redbull.org> would
lead people to believe that the domain name was connected with Complainant, and
thus is the equivalent to bad faith use).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the STOP Policy, the Panel
concludes that relief shall be hereby GRANTED. Accordingly, it is
Ordered that the domain name <hellokitty.biz> be TRANSFERRED from
Respondent to Complainant and that subsequent challenges under the STOP Policy
against this domain SHALL NOT be permitted.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 9, 2002.
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