DECISION

 

Toray Industries, Inc. v. Serge Yassievich

Claim Number: FA0706000998100

 

PARTIES

Complainant is Toray Industries, Inc., Chuo-ku, Tokyo (“Complainant”) represented by John E. Russell, of Allmark Trademark, 4041 Sugar Maple Drive, Suite A, Danville, CA 94506.  Respondent is Serge Yassievich (“Respondent”), PO Box 705, New York, NY 10040.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <toray.us>, registered with Go Daddy Software, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. O’Connor as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 1, 2007; the Forum received a hard copy of the Complaint on June 4, 2007.

 

On June 4, 2007, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <toray.us> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 June 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 26, 2007 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”).

 

A timely Response was received and determined to be complete on June 25, 2007.

 

An Additional Submission of Complainant was received on June 29, 2007 and determined to be in compliance with Paragraph 7 of the National Arbitration Forum’s Supplemental Rules (the “Supplemental Rules”).

 

On July 2, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. O’Connor as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name at issue be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that it is one of Japan’s largest corporations, with divisions and subsidiaries based in eighteen (18) countries and regions throughout the world. Complainant contends that it offers a wide array of goods and services, including those in the fields of fibers, textiles, fine chemicals, films, plastics, carbon fibers, advanced composites, electronics, housing and engineering, pharmaceuticals, medical devices and water treatment, and that its total sales for fiscal year 2006 exceeded $12 billion.  Complainant contends that it was featured in Fortune magazine’s “The World’s Largest Corporations Global 5 Hundred.”

 

Complainant contends that the trademark “TORAY” was first registered in 1977 and has since been used exclusively by Complainant and its subsidiaries.  Complainant contends that, at present, it owns trademark registrations for TORAY and other trademarks including TORAY (both hereinafter the “Trademark”) in over 130 countries, including 18 registrations in the United States.  These include at least one registration claiming a first use in the United States in 1986.

 

Complainant contends that it has expended tens of millions of dollars worldwide in advertising and promotion of the Trademark, making the Trademark famous.  Complainant also contends that it has registered a large number of domain names that include the Trademark, and used the Trademark at its primary website at <toray.com>.

 

Complainant contends that the Trademark is a unique identifier, having been formed from the name “Toyo Rayon” that was the original name of the company founded in 1926, and that the Trademark has no generic meaning in Japanese or any other language and does not serve as a common Japanese surname within either Japan or the U.S.

 

Complainant contends that Respondent has no rights or legitimate interest in the domain name at issue.  In support of this contention, Complainant argues that neither Respondent nor any businesses for which he is the principal have been granted any license or other form of permission by Complainant to use the Trademark or have ever been commonly known by the Trademark.  Complainant also argues that Respondent is not the owner of any pending trademark filings or registrations.  Complainant argues that the domain name does not resolve to any active Web pages.  Complainant also argues, more fully with regard to bad faith, that the failure to use the domain name at issue appears to be consistent with a practice of Respondent of acquiring large numbers of domain names for apparent resale, many of which contain the names of other well-known Japanese companies.

 

Complainant contends that the domain name at issue has been registered or is being used in bad faith.  In support of this contention, Complainant argues that the Trademark is famous and subject to trademark registrations in the U.S., and that the registration of a domain name containing such a trademark is evidence of bad faith.  Complainant also argues that Respondent has demonstrated a pattern of acquiring large numbers of domain names, many of which contain the trademarks of well-known companies, including certain named Japanese companies, and thus is engaged in cybersquatting.  Complainant further argues that Respondent was on the losing side of a NAF usDRP decision, Rexam PLC v. Meys, Inc. c/o Serge Yassievich, FA 211942 (Nat. Arb. Forum Jan. 5, 2004), in which case the panel held that Respondent had registered the domain name after the complainant therein had obtained its federal trademarks and had demonstrated bad faith by passively holding the domain name despite his constructive knowledge of complainant’s trademark.

 

Complainant supports these contentions and arguments by a listing of its worldwide trademark registrations, its corporate profile, an income statement, the noted article from Fortune, selected information from its U.S. trademark registrations for the Trademark, further information from three of those trademark registrations, a listing of its domain names including the Trademark, the WHOIS record for the domain name at issue, a search report for U.S. trademark registrations or applications owned by Respondent, and a listing of those owning 10 or more .us domain name registrations.

 

Complainant seeks transfer of the domain name at issue.

 

B. Respondent

 

Respondent contends that Complainant is a foreign-based business and therefore does not qualify under the “Nexus Policy” to register an empty .us domain.

 

Respondent contends that Complainant has submitted no proof that the Trademark has been violated and that he did not so violate the Trademark.

 

Respondent contends that he doubts that Complainant is a business and states that Complainant is trying to extort his property protected by the U.S. Constitution through engaging in the equivalent of robbery at gunpoint by using the National Arbitration Forum.

 

C. Additional Submissions

 

Complainant contends that Respondent fails to comply with paragraph 5(c) of the Rules by failing to respond specifically to the statements and allegations contained in the Complaint, by failing to provide a signed statement certifying the accuracy of the information in the Response, and by failing to include his postal address, e-mail address, telephone and facsimile numbers.  Complainant asks that the Panel accordingly disregard the Response.

 

Complainant contends that the Nexus Policy (“The usTLD Nexus Requirements”) has no relevance to usDRP proceedings under the Policy and applies only to registrants of .us domain names, not to those seeking relief under the Policy.

 

Complainant contends that it has a substantial commercial presence in the U.S.   In support of this contention, Complainant argues that it has a bona fide presence in the U.S. as required by the Nexus Policy and had sales in the U.S. for fiscal 2006 that totaled over $626 million, and that it owns 18 U.S. trademark registrations for the Trademark as contended in its Complaint.

 

Complainant supports these contentions by the Nexus Policy and by a listing of its U.S. sales.

 

FINDINGS

The Panel finds that some of the statements made by Complainant in its submissions are unsubstantiated.  The Panel admits into evidence only those statements that are verified by the documents attached to the submissions, or by affidavits or declarations, or that are admitted by the other party, or of which the Panel can take administrative notice, in accordance with the Panel’s powers under Paragraph 10(d) of the Rules.  The certification required by Paragraph 3(b)(xiv) of the Rules is not sufficient in the opinion of the Panel to demonstrate the admissibility of the statements made by the Complainant.  Complainants are reminded that they must prove each of the three elements of the Policy (to be discussed).  It is only in the case of default that a Panel is entitled to rely on the unsubstantiated statements of a complainant.

 

Such a case of default is present in this case.  Respondent not only has failed to submit any evidence, but also has failed to provide the certification required by Paragraph 5(c)(vii) of the Rules.  The Panel thus disregards the Response in its entirety, and accepts into evidence all of the statements of Complainant.

 

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.”

 

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;

(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

 

The Panel finds that Complainant has established rights in the Trademark, by reason of its U.S. trademark registrations, which are valid and subsisting.  The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.  15 U.S.C. §1057 (b).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb.  Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).  Complainant’s rights in the Trademark are further established by its numerous worldwide trademark registrations.  See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the [UDRP] Policy ¶ 4(a)(i).”).

 

The Panel finds that the Domain Name is confusingly similar to the Trademark.  The Domain Name is distinguished from the Trademark only by the addition of the generic and top-level domain “.us.”  This difference does not avoid confusing similarity.  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).

 

The Panel thus finds that Complainant has established a prima facie case for and thus has met its burden of proof under Paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of Paragraph 4(a)(ii) of the Policy:

 

(i)                  before any notice of the dispute, Respondent’s use of, or demonstrable

preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii)        Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii)       Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the domain name at issue under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).

 

Complainant has demonstrated that Respondent has no rights or legitimate interests in the domain name at issue, having failed to qualify under any of the circumstances under paragraph 4(c) of the Policy.

 

Respondent is making no use of or shown any intention to use the domain name at issue.  Passive holding of a domain name is not enough to establish rights or legitimate interests. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the passive holding of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP] Policy  ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that passive holding of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to UDRP Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP Policy ¶ 4(c)(iii)). 

 

Respondent also is not known by the domain name at issue.  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Panel thus finds that Complainant has established a prima facie case for and thus has met its burden of proof under Paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

 

Paragraph 4(b) of the Policy reads:

 

[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

The Panel notes the previous decision adverse to Respondent in the Rexam PLC case.  Respondent’s registration of the domain name at issue continues his pattern of preventing trademark owners from reflecting their marks in domain names, which represents bad faith registration or use pursuant to Policy ¶ 4(b)(ii).  See Arai Helmet Ams., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to UDRP Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous Policy proceedings, which established a pattern of cybersquatting).

 

The Panel also finds that, based on the totality of the circumstances, Respondent’s registration or use of the domain name at issue is indicative of bad faith under Policy ¶ 4(a)(iii).  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN [UDRP] Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he [UDRP] Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

 

The Panel takes notice that the domain name at issue was registered on May 17, 2002.  The Panel holds that Respondent’s non-use of the domain name at issue since its registration over five years ago constitutes bad faith registration or use pursuant to Policy ¶ 4(a)(iii).  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under UDRP Policy ¶ 4(a)(iii); see also Am. Broadcasting Coms., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).

 

The Panel also finds that, given Complainant’s worldwide trademark registrations, including those in the United States where Respondent resides, Respondent had actual or constructive knowledge of Complainant’s TORAY mark when registering the domain name at issue.  Given that Respondent was or should have been aware of the Trademark, the Panel finds that Respondent’s registration or use of the disputed domain name was in bad faith under Policy ¶ 4(a)(iii).  See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).

 

The Panel thus finds that Complainant has established a prima facie case for and thus has met its burden of proof under Paragraph 4(a)(iii) of the Policy.

 

DECISION

The Panel must address one point mentioned by Respondent and substantively addressed by Complainant.  The Nexus Policy does require a foreign company to have a bona fide presence in the U.S., in order to own an .us domain name registration.  The Panel finds that Complainant has established such a bona fide presence by reason of its U.S. trademark registrations, many of which have been renewed upon submission of evidence of use of the Trademark in the U.S., and by reason of its statement of U.S. revenues that are substantial.

 

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <toray.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. O’Connor, Panelist
Dated: July 12, 2007.

 

 

 

 

 

 

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