Hitachi Maxell, Ltd v. Andy Tran d/b/a Northwest Bakery, Inc.
Claim Number: FA0207000116770
Complainant is Hitachi Maxell, Ltd. c/o Maxell Corporation of America, Fair Lawn, NJ (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Andy Tran d/b/a Northwest Bakery, Inc., Seattle, WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maxell.us>, registered with Go Daddy Software.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 19, 2002; the Forum received a hard copy of the Complaint on July 19, 2002.
On July 19, 2002, Go Daddy Software confirmed by e-mail to the Forum that the domain name <maxell.us> is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 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 usTLD Dispute Resolution Policy (the “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 August 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
Subsequent to the date of appointment of the Hon. Ralph Yachnin copies of emails between the parties were received indicating that Respondent offered to transfer the domain name to Complainant. As this information was received after the matter was assigned to the Panel it cannot be considered.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <maxell.us> domain name is identical to Complainant’s MAXELL mark.
Respondent has no rights or legitimate interests in the <maxell.us> domain name.
Respondent registered the <maxell.us> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant holds U.S. Patent and Trademark Office (“USPTO”) Reg. Nos. 1,457,224 and 2,009,428 for the MAXELL mark. Complainant uses the MAXELL mark in connection with, inter alia, a wide variety of digital and analog media products for audio, video, and camcorder applications, accessories and headphones, computer storage media, batteries, and professional audio and video media.
Complainant adopted the MAXELL mark over fifty years ago and has since continuously used the mark to advertise and sell the aforementioned goods in interstate and international commerce. Complainant has invested substantial sums of money in developing and marketing its products. Due to Complainant’s longstanding use of the MAXELL mark and concerted advertising efforts, the mark is readily recognized and famous around the world.
Respondent registered the <maxell.us> domain name on April 24, 2002. Complainant never licensed or authorized Respondent to use the MAXELL mark for any reason. Complainant’s investigation revealed that Respondent registered a handful of domain names with the generic top-level domain “.us” that contained other entity’s well-known marks (e.g., <minolta.us>, <fila.us>, <prada.us> and <ricoh.us>).
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 draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in the MAXELL mark by providing proof of registration with the USPTO and continuous use of the mark for over fifty years.
Respondent’s <maxell.us> domain name contains Complainant’s entire MAXELL mark. Respondent’s domain name is exactly the same as Complainant’s mark but for the inconsequential addition of the generic top-level domain (“gTLD”) “.us.” Upon registering a domain name, the registrant is required to attach a gTLD to the second level domain. Therefore, when conducting an identical analysis under Policy ¶ 4(a)(i) the gTLD is irrelevant and the focus is on the second level domain, in this case “maxell.” Hence, Respondent’s <maxell.us> domain name is identical to Complainant’s MAXELL 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Given that Respondent has failed to respond to Complainant’s allegations that Respondent has no rights or legitimate interests in the <maxell.us> domain name, it may be presumed that Respondent has no such rights or legitimate interests. 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); 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).
In addition, once Complainant establishes a prima facie case, as is the present case, the burden shifts to Respondent to prove rights and legitimate interests. Since Respondent has failed to come forward, all reasonable inferences may be made in favor of Complainant. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); 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).
Respondent is not licensed to use the MAXELL mark and there exists no evidence showing that Respondent holds rights in a trade or service mark that is identical to the <maxell.us> domain name. Since Complainant has used the MAXELL mark for over fifty years and has actively protected the mark with a trademark registration, it is improbable that Respondent has a registered mark that is identical to the MAXELL mark. Furthermore, Respondent is not commonly known by the domain name. The only evidence of Respondent’s identity is that Respondent is known by either Andy Tran or Northwest Bakery, Inc. Therefore, Respondent has no rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also CDW Computer Centers, Inc. v. The Joy Comp. FA114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that Respondent had no trademark or service marks identical to <maxell.us> and therefore had no rights or legitimate interests in the domain name).
The Complaint does not clearly establish Respondent’s use of the <maxell.us> domain name, so it is inferred that Respondent does not actively use the domain name. Respondent, however, has passively held the domain name for an insignificant amount of time for no rights or legitimate interests to be found. On the other hand, Complainant has discovered that Respondent has engaged in a pattern of registering well-known marks in domain names containing the gTLD “.us.” Therefore, given the circumstances, it is clear that Respondent is opportunistically trading off of the goodwill of Complainant’s distinct MAXELL mark. Respondent’s infringing behavior of incorporating many distinct and famous marks in domain names permits the inference that any future use of the domain name would be to divert and confuse Internet users, presumably for profit. Therefore, Respondent has no rights or legitimate interests in the <maxell.us> domain name pursuant to Policy ¶¶ 4(c)(ii) and (iv). See 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <maxell.us> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The circumstances surrounding Respondent’s registration of the <maxell.us> domain name support the conclusion that Respondent registered the domain name in bad faith. It can be inferred that Respondent knew of Complainant’s rights in the MAXELL mark not only because of the notoriety of the mark but because of the fact that Respondent registered multiple domain names containing well-known marks. Therefore, it is evident that Respondent opportunistically registered the domain name in order to prevent Complainant from reflecting the MAXELL mark in a corresponding domain name and to somehow benefit from the registration. Thus, Respondent registered the domain name in bad faith under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names; and the registration of multiple domain names that infringe on Complainant’s trademark(s) is evidence of a pattern of conduct).
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 hereby GRANTED.
Accordingly, it is Ordered that the <maxell.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 3, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page