NEC v. Kawara Inc
Claim Number: FA1306001506201
Complainant is NEC (“Complainant”), United Kingdom. Respondent is Kawara Inc (“Respondent”), represented by Ryosuke Katsura of PLAN-B co., Ltd., Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nec-itsolutions.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2013; the National Arbitration Forum received payment on June 24, 2013.
On June 24, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nec-itsolutions.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2013 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@nec-itsolutions.com. Also on June 25, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NEC mark. Respondent’s domain name is confusingly similar to Complainant’s NEC mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <nec-itsolutions.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.
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 contends that it owns the NEC mark, which is the corporate logo and trademark of the NEC Corporation. Complainant argues that its NEC mark is used in conjunction with all goods and services supplied by NEC Corporation and its related companies worldwide. Complainant claims that it is the owner of a trademark registration with the USPTO for the NEC mark (Reg. No. 1,908,239, registered August 1, 1995). Although Respondent appears to reside in Japan. Complainant is not required to register the mark in the country in which Respondent resides under Policy ¶ 4(a)(i), so long as Complainant can establish rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel concludes that Complainant’s registration of the NEC mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i); Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant correctly points out that the domain name contains Complainant’s name, NEC. Respondent adds the generic term “itsolutions” and a hyphen to Complainant’s NEC mark in its <nec-itsolutions.com> domain name. Respondent’s addition of a generic term and hyphen is inconsequential to a Policy ¶ 4(a)(i) analysis. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Respondent adds the generic top-level domain (“gTLD”) “.com” to its <nec-itsolutions.com> domain name which does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, Respondent’s <nec-itsolutions.com> domain name is confusingly similar to Complainant’s NEC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no connection with Complainant in any way. Complainant states that Respondent is not commonly known by the <nec-itsolutions.com> domain name. The WHOIS information provided shows that Respondent listed “Kawara Inc” as the registrant, with “Tokuo Takefuji” as the contact. Complainant argues that Respondent is not authorized by Complainant to use the NEC mark and that Respondent is not an authorized reseller or distributor of NEC products or services. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it was commonly known by the domain name. Consequently, the Panel concludes that Respondent is not commonly known by the <nec-itsolutions.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent appears to have implemented a website redirection from the <nec-itsolutions.com> to Complainant’s <nec-itsolutions.co.uk> website. Complainant argues that Respondent’s redirection of its domain name to Complainant’s own website demonstrates that Respondent has no legitimate purpose of its own for the domain name. Because the Panel agrees that Respondent has made no legitimate use of its website other than to redirect Internet users to Complainant’s own website, the holds that Respondent is not using the <nec-itsolutions.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent wishes to sell the domain name to Complainant for valuable consideration. Complainant argues that Respondent wishes to sell the domain name for consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. A respondent who registers a domain name with the primary intention to sell the domain name for excessive consideration is acting in bad faith pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Complainant claims that Respondent wishes to disrupt Complainant’s business. Complainant asserts that Respondent appears to have implemented a website redirection from its <nec-itsolutions.com> domain name to Complainant’s <nec-itsolutions.co.uk> website. Causing a domain name to redirect to a complainant’s website is bad faith under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Thus, the Panel holds that Respondent’s redirection of its <nec-itsolutions.com> domain name to Complainant’s own website evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nec-itsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 24, 2013
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