Casio America, Inc. / Casio Keisanki Kabushiki Kaisha d/b/a Casio Computer Co., Ltd v. G-Shock Factory
Claim Number: FA1202001429239
Complainant is Casio America, Inc. / Casio Keisanki Kabushiki Kaisha d/b/a Casio Computer Co., Ltd (“Complainant”), represented by Paul R. Fransway of Butzel Long, P.C., Michigan, USA. Respondent is G-Shock Factory (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gshockfactory.com>, registered with GoDaddy.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2012; the National Arbitration Forum received payment on February 13, 2012.
On February 14, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <gshockfactory.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gshockfactory.com. Also on February 21, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
1. Complainant Casio America, Inc. is a wholly owned subsidiary of Casio Keisanki Kabushiki Kaisha d/b/a Casio Computer Co., Ltd.
2. Casio America, Inc. is the authorized representative of Casio Computer Co., Ltd. in the U.S.
3. Casio America, Inc. is fully authorized to use the trademarks of Casio Computer Co., Ltd. in promoting its products in the U.S. and is fully authorized to file this Complaint.
4. Complainant has United States Patent and Trademark Office (“USPTO”) trademark registrations for its G-SHOCK mark (Reg. No. 1,399,344 registered July 1, 1986) and its G-SHOCK MINI mark (Reg. No. 3,794,113 registered May 25, 2010), which it has used in connection with its watches and timepieces since 1983.
5. Respondent registered the confusingly similar <gshockfactory.com> on November 30, 2011, long after Complainant first used its mark.
6. Respondent’s <gshockfactory.com> domain name resolves to Respondent’s commercial website selling counterfeit versions of Complainant’s watches.
7. Respondent does not claim or hold itself out to be commonly known as G-SHOCK.
8. Respondent registered the disputed domain name with the purpose of profiting from its improper use of the G-SHOCK mark.
9. Respondent is not affiliated with Complainant or licensed or authorized to use Complainant’s mark.
10. Respondent intentionally created a likelihood of confusion regarding Complainant’s affiliation with the disputed domain name.
11. Respondent had knowledge of Complainant’s marks when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel notes that there are two Complainants in this matter: Casio America, Inc. and Casio Keisanki Kabushiki Kaisha d/b/a Casio Computer Co., Ltd. Complainant Casio America, Inc. is a wholly-owned subsidiary of Casio Keisanki Kabushiki Kaisha d/b/a Casio Computer Co., Ltd. Complainant Casio America, Inc. is the authorized representative of Casio Computer Co., Ltd. in the U.S. Complainant Casio America, Inc. is fully authorized to use the trademarks of Complainant Casio Computer Co., Ltd. in promoting its products in the U.S. Complainant Casio America, Inc. was authorized by Complainant Casio Computer Co., Ltd. to file this Complaint.
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. See Vancouver Organizing Committee for 2010 Olympic and Paralympic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006)(It is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity).
As Complainant has shown a sufficient nexus between the Complainants, the Panel treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
1. Complainant has United States Patent and Trademark Office (“USPTO”) trademark registrations for its G-SHOCK mark (Reg. No. 1,399,344 registered July 1, 1986) and its G-SHOCK MINI mark (Reg. No. 3,794,113 registered May 25, 2010), which it has used in connection with its watches and timepieces since 1983.
2. Respondent registered the confusingly similar <gshockfactory.com> on November 30, 2011, long after Complainant first used its mark.
3. Respondent’s <gshockfactory.com> domain name resolves to Respondent’s commercial website selling counterfeit versions of Complainant’s watches.
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."
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.
(4) 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.”).
Complainant owns USPTO trademark registrations for its G-SHOCK mark (Reg. No. 1,399,344 registered July 1, 1986) and its G-SHOCK MINI mark (Reg. No. 3,794,113 registered May 25, 2010). USPTO trademarks suffice to establish rights in a mark, even when Respondent is not located within the U.S. See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant owns rights in the G-SHOCK and G-SHOCK MINI marks pursuant to Policy ¶ 4(a)(i).
Respondent’s <gshockfactory.com> domain name is confusingly similar to Complainant’s G-SHOCK mark because Respondent merely adds the generic term “factory” to the mark. The disputed domain name removes the hyphen from Complainant’s mark and appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that removing a hyphen and adding a generic term and a gTLD fail to differentiate the disputed domain name from the mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” to the complainant’s marks does not alter the underlying mark and results in domain names that are confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds that Respondent’s <gshockfactory.com> domain name is confusingly similar to Complainant’s G-SHOCK mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent does not claim or hold itself out to be commonly known as G-SHOCK. Respondent has not obtained trademark or service mark rights in the G-SHOCK mark. Respondent is neither affiliated with Complainant nor authorized or licensed to use the mark. The WHOIS information identifies the registrant of the disputed domain name as “G-Shock Factory.” Despite the WHOIS information’s suggestion of an affiliation between Respondent and the disputed domain name, Respondent has not responded to the Complaint with any additional information indicating that it is commonly known by the disputed domain name and was so known prior to the disputed domain name’s registration. The Panel finds that Respondent is not commonly known by the <gshockfactory.com> domain name according to Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Respondent uses the disputed domain name for commercial purposes as it hosts a website selling counterfeit versions of Complainant’s watches. Respondent intentionally registered the disputed domain name with the purpose of profiting from commercial transactions with consumers intending to buy Complainant’s authentic products. As a result, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use at the disputed domain name. The Panel finds that Respondent has not satisfied Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (finding no bona fide offering of goods or services or legitimate noncommercial or fair use where Respondent used the disputed domain name to resolve to a website offering replicas of Complainant’s products for sale in competition with Complainant’s actual products).
Respondent registered the <gshockfactory.com> domain name to “convey the authenticity of the Respondent’s website” and create confusion by implying affiliation or association with Complainant. Respondent intentionally created a likelihood of confusion in order to profit from the promotion and sale of counterfeit versions of Complainant’s products to consumers who were unknowingly diverted away from the authentic products of Complainant that they were seeking. These actions are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Louis Vuitton Malletier S.A., L.L.C. v. david, FA 1213021 (Nat. Arb. Forum Aug. 11, 2008) (determining that the use of the disputed domain name to sell counterfeit versions of Complainant’s goods creates a likelihood of confusion and reveals bad faith registration and use according to Policy ¶ 4(b)(iv); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (concluding that the sale of counterfeit versions of Complainant’s products at the disputed domain name is an improper use of the complainant’s mark for commercial benefit in violation of Policy ¶ 4(b)(iv)).
Respondent had actual knowledge of Complainant’s G-SHOCK mark because the mark is famous and widely recognized, has been used in commerce since 1983, and has been registered with the USPTO since 1986. The Panel finds that Respondent registered the disputed domain name in bad faith registration according to Policy ¶ 4(a)(iii). See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”); see also Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gshockfactory.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 5, 2012
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