DECISION

 

Yahoo Assets LLC v. Kohei Takachi / EXPACT Inc.

Claim Number: FA2402002086286

PARTIES

Complainant is Yahoo Assets LLC ("Complainant"), represented by Joseph Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Kohei Takachi / EXPACT Inc. ("Respondent"), Japan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <techcrunch.tokyo>, registered with GMO Internet Group, Inc. d/b/a Onamae.com.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 29, 2024; Forum received payment on February 29, 2024.

 

On February 29, 2024, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <techcrunch.tokyo> domain name is registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.com 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 March 6, 2024, Forum served the Complaint and all Annexes, including a Japanese and English Written Notice of the Complaint, setting a deadline of March 26, 2024 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@techcrunch.tokyo. Also on March 6, 2024, the Japanese and English 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, Forum transmitted to the parties a Notification of Respondent Default in Japanese and English.

 

On March 27, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

According to the Registrar, the registration agreement for the domain name is written in Japanese.  Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case.  

 

Complainant filed its Complaint in English and argues that the proceedings should be conducted in English. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties.  Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering translation of the pleadings and the Decision (see, for example, Fair Isaac Corporation v. AKPOVO Chidiac, FA 2034648 (Forum Apr. 12, 2023) finding panel has discretion to conduct proceedings in English contrary to registration agreement given evidence that respondent understands the language; Maxim Integrated Products, Inc. v. wang xing xing, FA 2035248 (Forum Apr. 11, 2023) ("Respondent … advertise its products and services in English, and the resolving website asks in English for potential customers to contact Respondent directly...."); United Parcel Service of America, Inc. v. MEHKMET ISYAN AYIRKAN, FA 2035819 (Forum Apr. 11, 2023) ("Factors … seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent's understanding of the … language included in the Registration Agreement."); POC Sweden AB d/b/a POC North America v. Ma Fanghua, FA 2034043 (Forum Apr. 4, 2023) ("The Domain Name contains an English word, resolves to a website ("Respondent's Website") which is entirely in English and contains material copied from Complainant's English-language website.").

 

The Complainant's submission is that the domain name directs Internet users to a website with an English title: "Startup Log" and that "[b]ecause the Respondent is capable of corresponding in English and because Complainant's counsel cannot correspond in Japanese without cumbersome and costly efforts, Complainant requests that the language of proceedings be English in the spirit of fairness under UDRP Rule 11."

 

There is no evidence that Respondent is capable of corresponding in English. Moreover, the contention that Complainant cannot understand and correspond in Japanese is seemingly inconsistent with its later claim that the resolving website (all in Japanese) promotes material of the same kind as that in which Complainant has a business interest.

 

Nonetheless, the Panel accepts in this case that procedural fairness favours Complainant. There has been no Response. There has been no communication from Respondent objecting that it could not read or understand the Complaint. As discussed hereunder, Respondent appears to have no rights or legitimate interests and the reasonable inference is that the domain name was registered and used to take advantage of the repute of Complainant's trademark.  In all the circumstances the Panel determines that the proceedings should continue in English.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in TECHCRUNCH.  Complainant holds a national registration for that trademark.  Complainant submits that the disputed domain name is identical or confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Further, Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

In particular, Complainant alleges that Respondent has no trademark rights of its own, has no permission to use Complainant's mark, and has used the domain name to redirect Internet users to a website which shows technology news-related articles in competition with Complainant's use of the mark.

 

A.       Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant uses the trademark TECHCRUNCH in connection with online publications in the field of technology, business, and electronics;

2.       Complainant is the owner of, inter alia, United States Patent & Trademark Office ("USPTO") Reg. No. 4,064,062, issued November 29, 2011, for TECHCRUNCH; and

3.       the disputed domain name was registered on January 18, 2024, and resolves to a website which shows technology news-related articles.

 

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 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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of registration of the trademark TECHCRUNCH with the USPTO, a national trademark authority.

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".tokyo" can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain name is then identical to the trademark (see, for example, JUUL Labs, Inc. v. Takayuki Ikegami Ikegami / Ikegami Ikegami Takayuki, FA2004001893417 (Forum June 11, 2020) finding <juul.tokyo> identical to complainant's JUUL mark because "the addition of a gTLD may not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)."; 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 Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i)                      before any notice to you of the dispute, your 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 or services; or

 

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

 

(iii)                      you are making a legitimate noncommercial 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own. Complainant states that there is no relationship between the parties and Respondent has not been authorized to use the trademark.  There is nothing to contradict those claims which the Panel accepts. Further, the claim is that the resolving webpage promotes exactly the same articles of interest as those promoted by Complainant under the trademark.   As stated above, the material at the resolving website is all in Japanese. There are some slim suggestions that the articles may be technology related but much is unclear to a non-Japanese speaker.  

 

On balance, the Panel finds that a prima facie case has been made whether or not the material at the resolving website is competitive (see, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktiengesellschaft, FA 1626253 (Forum July 29, 2015) ("Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use."); Yahoo Assets LLC v. Sharih Hassan, FA2307002053123 (Forum August 8, 2023) finding that the respondent's use of a domain name incorporating Complainant's TECHCRUNCH mark without authorization and in connection with directly competing goods and services did not give rise to rights or legitimate interests); alternatively, see for example, Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) ("The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.").

 

 

The onus shifts to Respondent and in the absence of a Response, the Panel finds that Respondent has not discharged that onus and so finds the Respondent has no rights or interests. Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(i)                      circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)                      the respondent has 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 Respondent has engaged in a pattern of such conduct; or

 

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

 

(iv)                      by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website 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 the respondent's website or location or of a product or service on the site or location.'

 

The Panel finds that Respondent's conduct falls under paragraph 4(b)(iv) above. The Panel has found that the domain name is identical to the trademark.  Confusion is inevitable.  The likelihood is that the resolving webpage exists for commercial gain in one form or another, presumably by way of referral fees. In terms of the Policy, the Panel finds that Respondent has used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Charter Communications Holding Company, LLC v. Webdesk Two, FA 1800636 (Forum Sept. 5, 2018) finding bad faith in registration of <spectrumpack.com> because "[u]se of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant's business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).";  Yahoo Assets LLC v. Patrick Simmons, FA2211002022135 (Forum Dec. 30, 2022) finding that the domain <cyrptotechcrunch.com> was registered and used in "bad faith to create confusion with Complainant's TECHCRUNCH mark for commercial gain by using the confusingly similar Domain Name to resolve to a website offering competing services. Using a confusingly similar domain name to divert Internet users to a respondent's competing website can show bad faith registration and use per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv)").

 

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

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

 

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

 

 

 

Debrett G Lyons, Panelist

Dated: March 27, 2024