Hitachi Maxell, Ltd v. Andy Tran d/b/a
Northwest Bakery, Inc.
Claim Number: FA0207000116770
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
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>).
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
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.
DECISION
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
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