Sanyo Fisher Company, a division of Sanyo North America Corporation v. Domain Adminstrator
Claim Number: FA0705000992178
Complainant is Sanyo Fisher Company, a division of Sanyo North America Corporation (“Complainant”), represented by Evan
Finkel, of Pillsbury Winthrop Shaw Pittman LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sanyoprojectors.com>, registered with Encirca Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 25, 2007.
On
On May 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sanyoprojectors.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <sanyoprojectors.com> domain name is confusingly similar to Complainant’s SANYO mark.
2. Respondent does not have any rights or legitimate interests in the <sanyoprojectors.com> domain name.
3. Respondent registered and used the <sanyoprojectors.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sanyo Fisher Company, a division of Sanyo North America Corp., is a multinational electronics corporation that manufactures a broad range of electronic products. Complainant has operated under the SANYO mark in connection with the manufacture and sale of its various products for almost 50 years. Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) going back to 1960 for the SANYO mark (Reg. No. 695,970 issued April 12, 1960).
Respondent registered the <sanyoprojectors.com> domain name on
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant’s registration of its SANYO mark with the USPTO
sufficiently establishes its rights in the mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Respondent’s <sanyoprojectors.com>
domain name is confusingly similar to Complainant’s SANYO mark, as it
contains the entire mark and simply adds on an additional word, “projectors,”
which is descriptive of one of Complainant’s main products. Previous panels have held that the mere
addition of a word to a complainant’s mark, especially where the added word
describes the complainant, does not negate any confusing similarity with a complainant’s
mark. Moreover, the addition of the
generic top-level domain (“gTLD”) “.com” to the disputed domain name is
irrelevant to the Policy ¶ 4(a)(i) analysis as a top-level
domain is a required element of all domain names. Therefore, the disputed domain name in the
instant proceeding is confusingly similar to Complainant’s SANYO mark. See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000)
(finding that the disputed domain names <caterpillarparts.com> and
<caterpillarspares.com> were confusingly similar to the registered
trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by
the disputed domain names and the registered trademarks is that the goods or
services offered in association with [the] domain name are manufactured by or
sold by the Complainant or one of the Complainants [sic] approved distributors.
The disputed trademarks contain one
distinct component, the word Caterpillar”); 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use
of a gTLD is required of domain name registrants . . . .").
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <sanyoprojectors.com> domain name. Once Complainant has established a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the Complaint raises the
presumption that Respondent lacks rights or legitimate interests in the
disputed domain name. See Am. Express Co. v. Fang Suhendro,
FA 129120 (Nat. Arb. Forum
Respondent’s WHOIS information does not indicate that
Respondent is commonly known by the <sanyoprojectors.com>
domain name, and there is nothing else in the record to suggest that
Respondent is commonly known by the disputed domain name. In addition, Complainant has not authorized
or licensed Respondent to use the SANYO mark in any way, and Respondent is not
associated with Complainant or Complainant’s business. Therefore, the Panel finds that Respondent
has no rights or legitimate interests under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum
Respondent’s <sanyoprojectors.com> domain name resolves to a website displaying links to various third-party websites, several of which offer goods and services in direct competition both with Complainant’s business in general, and specifically with its projectors. Complainant alleges, and the Panel infers, that Respondent receives click-through fees when Internet users click on these links. The Panel finds that this does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Based on the undisputed evidence presented in the Complaint,
the Panel finds that Respondent is using the <sanyoprojectors.com> domain name to accrue click-through
fees. Respondent is therefore taking
advantage of the likelihood of confusion as to Complainant’s sponsorship and
affiliation with the disputed domain name. This indicates that Respondent
registered and is using the <sanyoprojectors.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”).
Moreover, Respondent is using the disputed domain name to
redirect Internet users to a website displaying links to websites in direct
competition with Complainant’s business.
Such use constitutes a disruption of Complainant’s business and also
qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's
purpose of registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)
[and] (iv).”).
The Panel thus finds that Policy ¶
4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <sanyoprojectors.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 29, 2007
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