japanairgases.com

The Complainant is Japan Air Gases Limited, of Tokyo, Japan, represented by L'Air Liquide of France.

The Respondent is MIC, of Closter, New Jersey, United States of America.

The disputed domain name <japanairgases.com> ("Disputed Domain Name") is registered with BulkRegister.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 6, 2003. On May 7, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On May 8, 2003, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2003.

The Center appointed Alistair Payne as the sole panelist in this matter on June 13, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 4, 2002, L’Air Liquide Japan ("ALJ") and Osaka Sanso Kogyo (OSK) announced officially in the press their intention to merge their respective industrial and medical gases businesses in Japan and create a new entity to be called "Japan Air Gases Ltd." The Complainant has provided relevant press clippings as evidence in Annexure 6 of its Complaint.

On September 6, 2002, the Respondent registered the Disputed Domain Name.

After the joint venture transaction was approved by the European Commission on October 10, 2002, ALJ discovered that the Respondent had registered the Disputed Domain Name. ALJ then registered the following domain names:

- <japanairgases.jp> on November 1, 2002;
- <japanairgases.co.jp> on November 5, 2002, on behalf of the Complainant; and
- <jpairgases.com> on November 11, 2002.

After the joint venture was approved by the Japanese Fair Trade Commission, ALJ filed a Japanese trade mark application for "JAPAN AIR GASES" on November 25, 2002. This application was transferred to the Complainant on February 13, 2003.

The Complainant contends that it enjoys a reputation in its corporate name "Japan Air Gases Ltd"and trade name "Japan Air Gases" and has done since the official announcement of its creation on September 5, 2002.

The Complainant is the holder of a trade mark application for "JAPAN AIR GASES" and this trade mark has been used by the Complainant or on its behalf and for its benefit, since shortly after the merger announcement. The domain names <japanairgases.co.jp> and <jpairgases.com> were registered in early November 2002, and used as addresses of operational websites to display and promote the products and services of the Complainant.

The Disputed Domain Name is identical to the trade mark "JAPAN AIR GASES" used by the Complainant and for which the Complainant has a trade mark application.

The Complainant submits that the UDRP rules do not require a Complainant to hold a registered trade mark and that common law rights to a trade mark suffice. Further, the Complainant submits that where a complainant is a new entity resulting from a merger, it is enough that the complainant was diligent in using or applying for trade mark registration promptly after the merger. In this regard the Complainant relies on a previous WIPO decision involving Syed Hussain who is the administrative contact for the Disputed Domain Name (Shire Biochem, Shire Pharmaceuticals Group and Shire International Licensing v Syed Hussain, WIPO Case No. D2002-0453).

The Complainant submits that the Respondent has no rights nor legitimate interests in respect of the Disputed Domain Name for the following reasons:

- The combination of the words "Japan Air Gases" which refers to the idea of a major company in the Japanese air and gases industry is not a common combination. The Respondent is an American company which has been a Respondent in a number of WIPO proceedings but has never filed any Response in those proceedings. The Respondent’s business activities are unknown, however the Respondent cannot have an intention to use the Disputed Domain Name with legitimate and bona fide business activities in the field of exploitation of air gases in Japan. These activities can only be conducted by large companies.

- The Respondent registered the Disputed Domain Name on September 6, 2002, that is, one day after the official announcement of the Complainant’s creation.

- The Respondent has never been authorised by the Complainant to use its trade mark, corporate or business name.

The Complainant asks the Panel to infer an intention to sell the Disputed Domain Name to the Complainant based on the Respondent’s registration of the Disputed Domain Name one day after the official announcement of the imminent creation of the Complainant.

The Complainant also provides negative internet search results to contend that the Respondent is not operating any website using the Disputed Domain Name. On this point, the Complainant refers to previous decisions of the Panel which have held that the passive holding of a domain name can establish use of a domain name in bad faith (Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, Medisite SARL v Interllisolve Limited, WIPO Case No. D2000-0179, Redcats and La Redoute v Tumay Asena WIPO 20001-0859 and Brown and Williamson Tobacco v Dennis Wilkins, WIPO Case No. D2001-0865).

Finally the Complainant refers to and provides as evidence a list of known WIPO and NAF cases involving Syed Hussain as a representative of MIC or CPIC Net and contends that the Respondent has lost a significant number of previous cases. In those cases, the Panel ordered the transfer or cancellation of domain names consisting of a combination of names of companies which had just merged or were discussing mergers, some of which had been registered by the Respondent.

The Respondent contends that the evidence above shows that:

- The Disputed Domain Name was registered or acquired primarily for the purpose of transferring it to the owner of the trade mark for monetary consideration;

- As in previous cases, the Disputed Domain Name was registered to prevent the Complainant from using the Disputed Domain Name to reflect its trade mark;

- The Respondent has an intention to harm the Complainant’s business. The Respondent’s history of systematic registration of domain names for companies to be established from mergers reflects this intention, as the companies to be created from the mergers are not yet fully operational and therefore unable to prevent such registration.

For all these reasons, the Complainant submits the Disputed Domain Name was registered and is being used by the Respondent in bad faith.

The Respondent did not reply to the Complainant’s contentions.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.

This element of the Policy requires the Complainant to prove that (a) it has rights in a trade mark or service mark, and (b) the Disputed Domain Name is identical to or confusingly similar to such trade mark or service mark.

From the evidence submitted by the Complainant it has established that it has common law rights in the mark "JAPAN AIR GASES" since the merger by marketing its products and services under this mark on its website and elsewhere. The Complainant has also made a trade mark application in respect of the same mark. Accordingly the Panel finds that in the circumstances the Complainant has rights in the mark "JAPAN AIR GASES" sufficient for this element of the Policy.

As the Disputed Domain Name (excluding the suffix ".com") is identical to the Complainant’s trade mark the Panel finds that the first element of the Policy is established.

In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:

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

(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has not replied to the Complainant’s contentions and therefore has not proved that it has rights or legitimate interests in the Disputed Domain Name. On the evidence before it, the Panel finds that the Respondent does not have an intention to use the Disputed Domain Name in relation to a business in the Japanese air and gas industry, is not commonly known by the Disputed Domain Name and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Panel therefore finds that the Complainant has also established this element of the Policy.

Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

The Complainant’s submissions are relevant to establishing the following circumstance set out in the Policy:

- That the Respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name.

The Panel accepts that Syed Hussain’s actions can be imputed to the Respondent because Syed Hussain is the administrative contact for the Respondent and there is no evidence that the Respondent has a real separate corporate existence.

The Complainant has provided as evidence a list of known WIPO and NAF cases involving Syed Hussain as a representative of MIC or CPIC Net. In those cases, the Panel ordered the transfer or cancellation of domain names consisting of a combination of names of companies which had just merged or were discussing mergers and which had been registered by the Respondent. From this evidence, a pattern of conduct is established, that the Respondent registers domain names using a combination of names of companies about to enter merger agreements. In the absence of any evidence to the contrary, the Panel therefore infers that the Disputed Domain Name was registered in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.

With respect to use of the Disputed Domain Name, it appears that the Respondent has simply held rather than activated or used the Disputed Domain Name in an active website. It has been held in a series of WIPO decisions that the passive holding of a domain name and failure to commercialise are factors to consider in deciding whether a domain name has been used in bad faith (L’Air Liquide v MIC,WIPO Case No. D2001-1246, Telstra Corporation v Nuclear Marshallows, WIPO Case No. D2000-0003).

On the basis of the pattern of past conduct by the Respondent, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.