Toray Industries, Inc. v. Serge Yassievich
Claim Number: FA0706000998100
PARTIES
Complainant is Toray Industries, Inc., Chuo-ku,
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
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
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
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
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
Complainant supports these
contentions by the Nexus Policy and by a listing of its
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
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
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
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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