The registrar is Network Solutions, Inc., 505 Huntmar Park Drive,
Horndon VA 20170-5142, United States of America ("the Registrar").
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute
Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned
Names and Numbers ("ICANN") on August 26, 1999, in accordance
with the Rules for the Policy, approved by ICANN on October 24, 1999,
("the Rules") and the WIPO Supplemental Rules for the Policy ("the
Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the
Center by email on April 15, 2002
and in hard copy on April 17, 2002. The
Center acknowledged receipt of Complaint on April 18, 2002. On the same day, the Center requested
the Complainants for the ACE code to convert the non-English domain names in
order for the concerned Registrar to verify these domain names. On April 19, 2002, the
Complainants notified the Center of the ACE code of the domain names. The Center sought registration details from the
Registrar, on April 19, 2002. The
Center received the confirmation
from the Registrar that, among
others, the Respondent is the current
registrant on April 25, 2002. After the communications between the Center and the Complainants
with regard to the transmission of a copy of Complaint with a cover sheet to
the Respondent and the Registrar, the Complainants sent them to the Respondent
and the Registrar by-email in accordance with the Rules, Paragraph 3(b)(xii)
and the Supplemental Rules, Paragraph 4(b).
On April 30, 2002, the Center satisfied itself that the Complainants had complied with all formal
requirements of the Rules, including payment of the prescribed fee, and notified the Respondent by
post/courier, facsimile and email
of the Complaint and of the commencement of this administrative proceeding. The
formal date of the commencement of the proceeding was accordingly April 30, 2002. The last day specified in the notice
for a response was May 20, 2002.
The communications by any means failed to reach the Respondent. On May 21, 2002,
no response having been filed, the
Center notified the Respondent of its default.
On June 3, 2002, the Center notified the parties of the appointment of Masato Dogauchi as the Administrative
Panel, after receiving the Statement of
Acceptance and Declaration of Impartiality and Independence from
Masato Dogauchi. The
Center notified that the Panel was required, absent exceptional
circumstances, to forward its decision to the Center by June 17, 2002.
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the
requirements of the Rules and Supplemental Rules; payment was properly made;
the Panel agrees with the Center of assessment concerning the Complaints of compliance
with the formal requirements of the Rules; the Complaint was properly notified
to the Respondent in accordance with Paragraph 2(a) of the Rules; no Response
was filed within the time specified by the Rules and the single-member Administrative
Panel was properly constituted.
4. Factual Background
Since the Respondent failed to furnish its response, the Panel proceeds to
consider the following facts submitted by the Complainants:
Both of the Complainants are companies incorporated under Japanese
law with their principal place of business in Kagoshima, Japan. One of them, Iwasaki Corporation, is
doing its business in passenger traffic and transportation industry, and its
ranking in that industry was the first place in Kagoshima prefecture in 2001. The other one, Iwasaki Hotels
Corporation, is doing its business in hotel industry, and its ranking in that
industry was also the first place in Kagoshima prefecture in 2001. They are members of the same business
group, Iwasaki Group. This is the
reason why they jointly filed the Complaint against the Respondent.
On April 1, 2001, several
companies within Iwasaki Group merged into one. Kagoshima Kotsu Kabushikikaisha,
one of the merging companies, was selected as a surviving corporation at that
time and its name was changed to Iwasaki Corporation. Iwasaki Corporation is
still using the name of "Kagoshima Kotsu (ŽŽ™“‡Œđ’Ę)"
as its trademark or service mark in passenger traffic and transportation business.
"Kagoshima" is the name of the principal place of business of Iwasaki
Corporation and "Kotsu" means "traffic" in Japanese. The name
of "Kagoshima Kotsu (ŽŽ™“‡Œđ’Ę)"can be found in southern part of Kyushu
Island where Kagoshima prefecture is situated.
On the other hand, Iwasaki Hotels Corporation uses "‚˘‚í‚ł‚Ťƒzƒeƒ‹ƒY (Iwasaki Hotels)", as its corporate name which is registered in Japan. This name is used in hotel business in
Kyushu Island and is known by people in even other countries through Iwasaki
Hotels Corporation ofs campaign in golf tournament and so on.
According to the information registered at the
WHOIS database of the Registrar, the disputed domain names <ŽŽ™“‡Œđ’Ę.com>, <‚˘‚í‚ł‚Ťƒzƒeƒ‹ƒY.com> and <‚˘‚í‚ł‚Ťƒzƒeƒ‹ƒY.net> were registered by the
Respondent. There is no evidence
that shows the activity of the Respondent using these domain names.
5. Parties of Contentions
A. Complainants
The Complainants assert in essence as follows:
(1) The disputed domain names are identical or confusingly similar to the trademark and
the company name, respectively, in which the Complainants have rights under Japanese law;
(2) The Respondent should be considered as having no rights or legitimate interests in
respect of the dispute domain names;
(3) The disputed domain names were registered in bad faith.
With regard to the item (1) above, the Complainants introduce copies of
their corporate registration which show their present corporate names. The corporate registration of Kagoshima
Kotsu Kabushikikaisha also show its previous corporate name before the merger
on April 1, 2001, that is "Kagoshima Kotsu (ŽŽ™“‡Œđ’Ę) Kabushikikaisha". The Complainants introduce copies of their corporate profile
and information made by third parties as well as their own brochures using
their corporate names and the trademark of "Kagoshima Kotsu (ŽŽ™“‡Œđ’Ę)".
With regard to the items (2) and (3) above, the Complainants assert the
following facts showing the Respondent ofs bad faith in its registration without
any legitimate interests:
- The Respondent ofs business areas are not related to "Kotsu (Œđ’Ę)" nor to "Hotels (ƒzƒeƒ‹ƒY)", since the Respondent is a corporation whose
business are electric work, works of fire facility, sale of hot water equipment
and sale of air-conditioning equipment;
- The Respondent has never used or made any demonstrable preparation to use the
disputed domain names;
- The Respondent has acquired, at least, <“ě“ú–{‹â?s.com>
and <“ě?‘Œđ’Ę.com> too. "“ě“ú–{‹â?s (Minami-Nippon Bank)" is a
bank with its principal place of business in Kagoshima, and "“ě?‘Œđ’Ę (Nangoku Kotsu)" is a passenger transportation business company with its
principal place of business in Kagoshima, too. There is no indication of the Respondent ofs legitimate
interests in respect of these domain names.
The Complainants accordingly request a decision that the disputed domain
names be transferred to the Complainants.
B. Respondent
There was no response filed.
6. Discussion and Findings
According to Paragraph
15(a) of the Rules, a Panel shall decide a Complaint on the basis of the statements and documents submitted and in
accordance with the Policy, the Rules and any rules and principles of law that
it deems applicable. Since the Respondent has not made any
submission, the following decision is rendered on a basis of the submission
from the Complainants.
In accordance with Paragraph 4(a) of the Policy, for the Complaint to be granted, the Complainants must prove each of the
following:
- The disputed domain name is identical or confusingly similar to a trademark or
service mark in which the Complainants
have rights; and
- The Respondent has no rights or legitimate interests in respect of the domain name;
and
- The disputed domain name has been registered and is being used in bad faith.
These requirements will be verified respectively.
Identical and Confusing Similarity
"Kagoshima Kotsu (ŽŽ™“‡Œđ’Ę)" was the essential part of the previous
corporate name of Kagoshima Kotsu Kabushikikaisha, one of the Complainants,
before the merger on April 1, 2001, and such name is still used, at
least, as the service mark in passenger traffic and transportation business of
Iwasaki Corporation, one of the Complainants. Incidentally, although the Complainants assert that the name
of "Kagoshima Kotsu (ŽŽ™“‡Œđ’Ę)"
is used as the trademark in such business, there is no evidence showing that
the name is registered as the trademark in Japan. However, it is established by such evidences as brochures
and other documents submitted by the Complainants that the name is used, at
least, as the service mark by Iwasaki Corporation and such mark is well known
to the consumers in, at least, Kagoshima area. Based upon such facts, Iwasaki Corporation has right in such
service mark protected under Japanese law (Article 2(1)(i) of "Husei Kyoso
Boshi Ho" (Unfair Competition Law), 1993 Law No.47).
On the other hand, "Iwasaki Hotels (‚˘‚í‚ł‚Ťƒzƒeƒ‹ƒY)" is the essential part of the corporate name
of Iwasaki Hotels Corporation, the other one of the Complainants. It is clear from the record that the
disputed domain names include identical terms, "ŽŽ™“‡Œđ’Ę" and "‚˘‚í‚ł‚Ťƒzƒeƒ‹ƒY",
with the essential part of the Complainants of trade name and with company name
used legitimately in Japan. Absent
the rebuttal from the Respondent, there is no reason to deny the finding that
the first requirement is satisfied.
Legitimate Interests
According to the complaint, the Complainants
could not find where and how the Respondent is using or is preparing to use the
disputed domain names. As the
Respondent has not argued any rights or legitimate interests in respect of the
disputed domain names, it is inevitable to conclude that the second requirement
is also satisfied.
Bad Faith
In accordance with the Paragraph 4(b)(ii),
where it is found that the Respondent have engaged in a pattern of such conduct as having registered the domain
names in order to prevent the
owners of the trademark or service
mark from reflecting the mark in a corresponding domain names, such circumstances can be evidence of the registration and use of the disputed domains name
in bad faith. In this case, the Complainants pointed out the fact that the
Respondent has acquired such other unrelated domain names representing famous
names of others as <“ě“ú–{‹â?s.com> and <“ě?‘Œđ’Ę.com>.
In consideration of the fact that the Respondent has not argued to the
contrary, the third requirement is also satisfied.
Accordingly, all three cumulative requirements
as provided for in Paragraph 4(a)
of the Policy are determined to be
satisfied.
7. Decision
In accordance with Paragraphs 4(b)(i) of the Policy and 15 of the Rules, the Panel decides that the disputed domain
name <ŽŽ™“‡Œđ’Ę.com>
(bq- -3cph6ukqlt3e5jeqdi.com) shall be transferred from the Respondent (Mitaden
Co., Ltd.) to one of the Complainants (Iwasaki Corporation); and that the
disputed domain names <‚˘‚í‚ł‚Ťƒzƒeƒ‹ƒY.com>
(bq- -gbci6vkn3pdoxoq.com) and <‚˘‚í‚ł‚Ťƒzƒeƒ‹ƒY.net>
(bq- -gbci6vkn3pdoxoq.net) shall be transferred from the Respondent (Mitaden
Co., Ltd.) to the other one of the Complainants (Iwasaki Hotels Corporation).
Masato Dogauchi
Sole Panelist
Dated: June 17, 2002
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