Ricoh Company, Ltd. v. Whois Manager
Claim Number: FA2204001990830
Complainant is Ricoh Company, Ltd. (“Complainant”), represented by Christiane S. Campbell of Duane Morris LLP, Pennsylvania, USA. Respondent is Whois Manager (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myricoh-usa.com>, (‘the Domain Name’) registered with EPAG Domainservices GmbH.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2022; the Forum received payment on April 4, 2022.
On April 5, 2022, EPAG Domainservices GmbH confirmed by e-mail to the Forum that the <myricoh-usa.com> Domain Name is registered with EPAG Domainservices GmbH and that Respondent is the current registrant of the name. EPAG Domainservices GmbH has verified that Respondent is bound by the EPAG Domainservices GmbH 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 April 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2022 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@myricoh-usa.com. Also on April 5, 2022, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
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 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 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
The Complainant’s contentions can be summarized as follows:
Complainant is the owner of the trade mark RICOH which is registered, inter alia, in the USA for copying machines and has been used since 1946. The Complainant owns ricoh.com.
The Domain Name registered in 2015 is confusingly similar to the Complainant’s mark containing it in its entirety and simply adding a hyphen, the generic terms ‘my’ and ‘USA’ and the gTLD “.com” none of which is sufficient to distinguish the Domain Name from the Complainant’s mark.
Respondent is not commonly known by the Domain Name and has no authorization from the Complainant to use the latter’s mark.
The Domain Name has been linked to a web page with sponsored listings including links to competitors of the Complainant. This is not bona fide use or legitimate noncommercial fair use.
The Respondent has no rights or legitimate interests in the Domain Name.
The use by the Respondent of the Domain Name disrupts the Complainant’s business and causes confusion amongst Internet users. The Domain Name has been registered and used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the trade mark RICOH which is registered, inter alia, in the USA for copying machines and has been used since 1946. The Complainant owns ricoh.com.
The Domain Name registered in 2015 has been used for competing pay per click links.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name consists of the Complainant’s RICOH mark (registered, inter alia, in the USA and used since at least 1946 for copying machines) the generic terms ‘my’ and ‘usa’, a hyphen and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). Nor does the addition of a hyphen. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).). Accordingly the Panel agrees that the addition of the generic terms ‘my’ and ‘USA’ and a hyphen to the Complainant's mark does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence that the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
It is clear from the evidence that the Respondent has used the site attached to the domain name to link to businesses competing with the Complainant through pay per link links. The usage of the Complainant’s mark which has a reputation in relation to copying machines for competing links not connected with the Complainant is not fair and the page attached to the Domain Name does not make it clear that there is no commercial connection with the Complainant. As such it cannot amount to the bona fide offering of goods and services or a legitimate commercial or fair use. See Ashley Furniture Industries Inc. v. domain admin / private registrations aktien Gesellschaft, FA 1506001626253 (Forum July 29, 2015).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent is using the Domain Name to point to pay per click links to make profit from promoting competing businesses not associated with the Complainant in a disruptive and confusing manner. The mention of the Complainant in one of the links shows the Respondent was aware of the Complainant, its rights business and services.
Accordingly the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and products or services offered on it disrupting the Complainant’s business. See Capital One Financial Corp v. DN Manager/Whois-Privacy.Net Ltd, FA 1504001615034 (Forum June 4, 2015).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myricoh-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 28, 2022
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