Akai Electric Co., Ltd. v. Semi-Tech
(Global) Ltd.
Claim Number: FA0206000114653
PARTIES
Complainant
is Akai Electric Co., Ltd.,
Tokyo, JAPAN (“Complainant”)
represented by Felicity Porter. Respondent is Semi-Tech (Global) Ltd., New York, NY, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <akai.com>,
registered with Network Solutions.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 20, 2002; the Forum received a hard copy of the
Complaint on June 17, 2002.
On
July 8, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <akai.com> is
registered with Network Solutions and that Respondent is the current registrant
of the name. Network Solutions has
verified that Respondent is bound by the Network Solutions 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
August 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 21,
2002, 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@akai.com by e-mail.
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
September 16, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson as the 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 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
The
<akai.com> domain name is identical to Complainant’s AKAI mark.
Respondent has no rights or legitimate
interests in the <akai.com> domain name.
Respondent registered and used the <akai.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant owns federal trademark
registration rights for the AKAI mark with the United States Patent and
Trademark Office (“USPTO”), Registration Number 930,495. The USPTO registration is based on a date of
first use of November 18, 1970, but Complainant has “conducted business since
its establishment in 1929 as an audio visual instrument manufacturer and
distributor under the name AKAI and phrases that combine AKAI with other
words.”
Complainant’s AKAI mark is a coined term
that has no meaning in the English language.
Hence, the AKAI mark is fanciful and represents the strongest variety of
trademarks. In addition, Complainant
has invested significant capital over decades of widespread use and promotion
of the AKAI mark in the United States and other countries.
Respondent registered the <akai.com>
domain name on July 26, 1995.
Respondent uses the subject domain name to resolve to a website
containing information about Complainant and its products. At the website, Respondent attempts to pass
itself off as Complainant by providing information about Complainant that
suggests that Complainant is the website owner.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
shall draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the Rules.
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 established its rights in the
AKAI mark through proof of registration with the USPTO and by longstanding
continuous use of the mark for business purposes.
The domain name registered by Respondent
contains Complainant’s AKAI mark in its entirety with the inconsequential
addition of the generic top-level domain (“gTLD”) “.com.” It is established precedent that the addition
of a gTLD does not alter the domain name so as to add any source identifying
significance. Hence, the focus of a
Policy ¶ 4(a)(i) “identical” analysis remains on the second level domain, in
this case “akai.” The second level
domain is exactly the same as Complainant’s fanciful AKAI mark; thus, rendering
Respondent’s <akai.com> domain name identical to Complainant’s
mark. See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Visit Am., Inc. v. Visit Am.,
FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of
the Internet address and does not add source identity significance); see
also Blue Sky Software Corp. v.
Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to Complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference").
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant asserts that Respondent has
no rights or legitimate interests in the <akai.com> domain name
and Respondent has not challenged that assertion. Complainant’s presentation of a prima facie case against
Respondent shifts the burden to require Respondent to affirmatively demonstrate
rights and legitimate interests in the <akai.com> domain
name. Since Respondent did not answer
the Complaint, the Panel may presume Complainant has no such rights or
legitimate interests in the domain name.
See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that under certain circumstances the mere assertion by Complainant that Respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to Respondent to demonstrate that such a right or legitimate interest does
exist); see also Canadian Imperial
Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept.
23, 2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Furthermore, due to Respondent’s failure
to submit a Response, all reasonable inferences may be drawn 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”); see also 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).
Complainant provides evidence that
Respondent uses the <akai.com> domain name to pass itself off as
Complainant. At the website to which
the subject domain name resolves, Respondent provides information indicating
that Complainant is the owner and operator of the website. Complainant, however, alleges that it has no
connection with the website and that Respondent is opportunistically using
Complainant’s fanciful AKAI mark at the website. Respondent’s use of the domain name in this manner dilutes
Complainant’s AKAI mark and confuses consumers. It does not constitute a
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), and it does not represent a legitimate fair use under Policy ¶
4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat.
Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because Respondent's sole purpose in selecting the domain names was to
cause confusion with Complainant's website and marks, it's use of the names was
not in connection with the offering of goods or services or any other fair
use); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding
(i) the fact that Complainant has not licensed or otherwise permitted
Respondent to use any of its trademarks and (ii) the fact that the word TELSTRA
appears to be an invented word, and as such is not one traders would
legitimately choose unless seeking to create an impression of an association
with Complainant, demonstrate that Respondent lacks rights or legitimate
interests in the domain name).
No evidence in this record suggests that
Respondent has a connection with the AKAI mark that would support a finding
that Respondent is commonly known by the <akai.com> domain
name. Respondent has no affiliation
with Complainant and never received permission to use Complainant’s AKAI
mark. The Panel knows Respondent only
as Semi-Tech (Global) Ltd. Respondent’s use of the domain name to represent
itself as Complainant does not establish that Respondent is commonly known by
the AKAI mark. Therefore, Respondent
has no rights or legitimate interests in the <akai.com> domain
name pursuant to Policy ¶ 4(c)(ii). See
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); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <akai.com>
domain name and that Policy ¶ 4(a)(ii) has been satisfied.
Circumstances that evidence bad faith
registration and use of a domain name are set out in Policy ¶ 4(b). These circumstances, however, are without
limitation and the Panel is permitted to look at the totality of circumstances
surrounding the case in order to determine bad faith. See Educational
Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the
Policy “[I]ndicates that its listing of bad faith factors is without
limitation”); see also CBS Broad.,
Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy
expressly recognizes that other circumstances can be evidence that a domain
name was registered and is being used in bad faith”); see also Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality” of the circumstances).
This case is unique because Respondent
uses the <akai.com> domain name for a website that is apparently
designed as a means for Respondent to pass itself off as Complainant. As such, this case does not fit squarely
into a suggested bad faith circumstance under Policy ¶ 4(b). Respondent, however, uses Complainant’s
fanciful AKAI mark as a means of representing itself as Complainant for an
unexplained purpose. Given the
circumstances, it is clear that Respondent is trading on Complainant’s
goodwill. Thus, Respondent knew of
Complainant’s rights and interests in the fanciful AKAI mark prior to
registering and using the domain name and Respondent’s registration and subsequent
deceptive use of the <akai.com> domain name constitutes bad faith
under Policy ¶ 4(a)(iii). See Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the domain names); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
“domain names are so obviously connected with Complainant that the use or
registration by anyone other than Complainant suggests ‘opportunistic bad
faith’”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222
(WIPO May 29, 2000) (finding that Respondent’s use of the title
“Dodgeviper.com Official Home Page” gave consumers the impression that
Complainant endorsed and sponsored Respondent’s website).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <akai.com> be transferred from Respondent to
Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: September 30, 2002.
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