Tokyu Corporation v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc.
Case No. D2008-1406
1. The Parties
The Complainant is Tokyu Corporation of Tokyo, Japan, represented by Abe, Ikubo & Katayama, Japan.
The Respondent is Whois Privacy Protection Service, Inc. / Demand Domains, Inc. both of Bellevue, Washington, United States of America, internally represented.
2. The Domain Name and Registrar
The disputed domain name <maebashitokyuinn.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2008. On September 16, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 16, 2008, eNom transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 24, 2008. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the Amended Complaint on September 27, 2008. The Center verified that the Complaint together with the amendment to the Complaint and the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response October 20, 2008. The Response was filed with the Center October 20, 2008.
The Center appointed Alistair Payne, Masato Dogauchi, and Paul M. DeCicco (the “Panel”) as panelists in this matter on November 17, 2008. The Panel finds that it was properly constituted. Each member of 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.
Pursuant to the Rules, paragraph 15(b), the decision due date was extended to December 8, 2008.
4. Factual Background
The Complainant has trademark rights in a part of the disputed domain name. The domain name resolves to an unauthorized website which appears to conflict with the Complainant's rights. The Complainant's mark is effectively identical to a part of the disputed domain name. While not admitting to the several contentions made by the Complainant, the Respondent unequivocally agrees to the requested relief.
5. Parties' Contentions
A. Complainant
The Complainant contents as follows:
(1) The disputed domain name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights.
The Tokyu Group is one of the leading enterprise groups in Japan, comprising 287 companies and 9 non-profit corporations (as of the end of March 2007), including 11 public limited companies (as of the end of March 2007). The history of the Tokyu Group started with the establishment in 1922. The Tokyu Group is engaged in a wide range of businesses such as (a) transportation, (b) real estate, (c) retail, (d) leisure and services, and (e) hotel/hospitality.
The hotel business is one of the main businesses that constitute the core of the business operated by the Tokyu Group. It operates its hotel business widely even in the global market. As such, it can be said that the Tokyu Group is one of the largest enterprise groups in the world.
The Complainant is in charge of registering and managing trademarks relating to the businesses of the group companies as a core company of the Tokyu Group. The Tokyu Group including the Complainant has continuously used marks such as “東急” (“Tokyu” written in Chinese character), “トーキュー / トウキュウ” (two different possible notations of “東急” in katakana, which is one of the systems of letters to express Japanese language), and “109”, as company names or business indications of the group companies, ever since the establishment of the Complainant in 1922, and has offered a wide variety of products and services using these marks. It can be easily understood that the trademarks “東急” and “TOKYU”, and the business indication “東急イン” (“Tokyu Inn” written in Chinese character and katakana)” are widely known to hotel users in Japan and overseas as marks indicating the Tokyu Group and the hotel business thereof.
The Respondent has registered the disputed domain name. The domain name is identical or confusingly similar to trademarks in which the Complainant has rights or legitimate interests. If the top level domain (“.com”) is eliminated from the domain name, the main part becomes “maebashitokyuinn”. The former part thereof “maebashi” is the name of a city “前橋” (“Maebashi” in Chinese letters) in Gunma Prefecture, Japan, and the latter part “tokyuinn” is the same as the name of “東急イン” (“Tokyu Inn” in Chinese character), one of the hotel brand names of the Complainant. Maebashi Tokyu Inn had been in business from April 1986 to July 31, 2006, for 20 years, in Maebashi City. If this hotel name “前橋東急イン” is written in Roman letters, it inevitably becomes identical to “maebashitokyuinn”. Although the Complainant does not hold a trademark right as for the character strings “maebashitokyuinn” or “tokyuinn”, it has a trademark registration for a mark including a character string “東急イン”, which is written in Roman letters as “tokyuinn” or “tokyuin”.
In the light of these facts, it can be said that the disputed domain name including a character string “tokyu” as its major part suggests that there is a capital or a business tie-up between the Respondent and the Tokyu Group, and thus it is confusingly similar to “TOKYU” or “東急” for customers.
(2) The Respondent has no rights or legitimate interests in respect of the domain name.
Considering the trademarks “TOKYU”, “東急”, and those including a character string “東急イン” in which the Complainant has rights, and the activities which the Complainant has performed from past to present in connection with these trademarks, as well as the high notability of these trademarks in Japan and in the world, it is impossible that the Respondent was not aware of the operation of “Maebashi Tokyu Inn” by the Tokyu Group and the Complainant's above trademarks when it attempted to obtain the disputed domain name, from rules of thumb.
The Complainant's trademark “東急” (“Tokyu” written in Chinese character), which is the main part of the name of the Tokyu Group, is a coined term created in 1942 along with the Complainant's name to “Tokyo Kyukou Dentetu Co., Ltd.” The term “Tokyu” is an abbreviation of “Tokyo Kyukou”. It is not such a common term that can be easily conceived or selected as a trademark or a domain name by people who do not know the Complaint's trademarks .
Further, a character string “東急イン” (“Tokyu inn” written in Chinese character and katakana) included in the Complainant's trademarks is a coined term created by combining the foregoing “東急” and the word “イン” (inn) which means accommodation, and thus it is not such a common term that can be easily conceived or selected by people who do not know the Complaint's trademarks either. Rather, these character strings have come to be known in Japan and in the world only by the Tokyu Group's adoption as its business indications or trademarks.
There has been no individual or organization other than the Tokyu Group that has conducted business activities or private activities using “maebashitokyuinn” or any names similar thereto, and at least, there is no fact that it is so recognized generally.
A website has been opened using the disputed domain name. This is a simple website with several items listed as links under the indication of “Welcome to <maebashitokyuinn.com>”. When “Maebashi Tokyuinn” is selected, a link to a website of another hotel located in Maebashi City is provided. In addition, when another item “Hotel” is selected, a website which relates to search and reservation of hotels in Japan and overseas is introduced. As such, the Respondent has created a simple website with several links provided therein, using the disputed domain name. Based on this fact only, it cannot be said that the use of such domain name by the Respondent is just and fair. It is clear from the above facts that the Respondent has the intention of gaining commercial profits by causing confusion for customers between the operations of the Tokyu Group and those of other companies. In addition, the Respondent has not publicly disclosed its name, address, and contact points in the WhoIs.
From the foregoing, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(3) The disputed domain name was registered and is being used in bad faith.
Based on the facts stated above, it cannot be considered that the Respondent was not aware of the Complainant's trademarks and incidentally registered the disputed domain name independently of the Complainant. And, it is apparent from the website of the Respondent as stated above that the Respondent has the intention of causing confusion with respect to the source of the products or services in the foregoing website, as well as the sponsorship and capital or business tie-up with the Complainant and Tokyu Hotels Co., Ltd., and of gaining commercial profits, by using the disputed domain name. Therefore, it is clear that the Respondent has registered and is using the disputed domain name in bad faith.
In addition, in the same website, there are indications of “This domain may be for sale” and “Buy this Domain”. When the “Buy his Domain” is clicked, a page appears with description that “Make an offer on <maebashitokyuinn.com>. If you are interested in purchasing this domain, please fill in the following information” so that the visitors of this website can contact the Respondent. In the light of the content of such description inducing purchase of the disputed domain name for a fee, it is clear that the Respondent has registered and is using the domain name with the intention of selling it to the Tokyu Group or its competitors. Therefore, it is clear that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent imitated the Complainant's notable trademark recognizing that the disputed domain name is extremely similar thereto, and has registered and is using the disputed domain name with the dishonest purpose of taking a free ride of the Complainant's or the Tokyu Group's business honor and customer goodwill, or receiving payment from the Tokyu Group or its competitors.
Thus, the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent contends as follows:
The Respondent respectfully requests the Administrative Panel to grant the Respondent's request to simply transfer the disputed domain name to the Complainant.
The Respondent is the registrant of this domain name.
The Respondent has a policy against holding domains in derogation of legitimate rights holders. At the time the Respondent assumed ownership of the disputed domain name, it was unaware of the Complainant's purported rights in the disputed domain name. The Respondent was unaware of the Complainant's alleged trademarks until it received the current UDRP action filed by the Complainant.
The Complainant did not contact the Respondent regarding its concerns with the Respondent's registration of the disputed domain name. The Complainant filed the current UDRP action, instead. Had the Complainant contacted the Respondent prior to initiating this UDRP action, the Respondent would have willingly, and at no charge, transferred the disputed domain name to the Complainant.
On October 8, 2008, upon receiving the Complainant's Complaint, a representative for the Respondent contacted the representative of the Complainant and offered to simply transfer the disputed domain name to the Complainant. The Respondent did not receive a reply from the Complainant.
On October 10, 2008, the representative for the Respondent sent a follow up e-mail to the representative of the Complainant again offering to simply transfer the disputed domain name to the Complainant.
On October 13, 2008, the representative of the Complainant replied by e-mail, rejecting the Respondent's offer of immediate transfer of the disputed domain name.
On October 15, 2008, a corporate counsel for the Respondent sent an e-mail message to the representative for the Complainant, restating that the Respondent had no prior knowledge of the Complainant's alleged rights in the disputed domain name, that there was no bad faith intent, and asking that the Complainant reconsider the Respondent's offer of free and immediate transfer as a means to quickly and efficiently resolve the matter. The counsel for the Respondent did not receive a reply.
The Complainant asserts that the Respondent's use of a privacy protection service is evidence that the Respondent has no rights or legitimate interests in the domain name and/or that the domain name was registered in bad faith. Whois Privacy Protection Services, Inc. offers a service which allows the registrant of a domain name to conceal its identity for legitimate purposes. The Respondent does not conceal its identity for any illegitimate or bad faith purpose.
Throughout this dispute, the Respondent has acted with the utmost good faith responding promptly upon receipt of this action and offering immediate transfer of the disputed domain name. In light of the foregoing, the Respondent requests that the Panel dismiss the Complaint in as much as the Respondent has acted only in good faith. Upon dismissal, the Respondent agrees to immediate transfer of the disputed domain name to the Complainant. In the alternative, the Respondent respectfully requests that the Panel refrain from making any formal finding that the Respondent acted in “bad faith.” Rather, the Respondent respectfully requests that the Panel simply endorse the Respondent's offer to transfer the disputed domain name to the Complainant.
6. Discussion and Findings
Generally, a panel considers three factors in reaching its decision. First, whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; secondly, whether the Respondent has rights or legitimate interests in the disputed domain name, and; thirdly, whether or not the Respondent has registered and used the disputed domain name in bad faith.
However, in the instant case, the Respondent unequivocally consents and agrees to the relief requested by the Complainant. In such cases, some panels have found that a respondent's consent to the requested relief obviates the need for analysis regarding the particular factors evidencing rights and interests and bad faith. See Boehringer Ingelheim International GmbH v. Modern Limited - Cayman Web Development, NAF Claim No. FA0211000133625 (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Claim No. FA0311000212653. (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”). Additionally, in such cases these panels have only considered whether or not the Complainant had rights in the mark claimed to be confusingly similar to the disputed domain name. See Citigroup Inc. v. Texas International Property Associates- NA NA, NAF Claim No. FA0806001210904.
Here, as in the cases cited above, the Respondent consents to the transfer of the disputed domain name. The Complainant has proffered adequate evidence to show that it has exclusive rights in the disputed domain name. The Complainant's widely known marks have been registered and are in use world-wide. The mark is identical in sight and sound to the core part of the second level disputed domain name. The balance thereof is the name of a city where one of the Complainant's hotels (the name of which was Maebashi Tokyu Inn) used to be located.
The Policy states:
“The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of [the] domain name or the transfer of [the] domain name registration to the complainant.” Policy, paragraph 4(i) (emphasis added).
When a respondent consents to transfer, it may in the circumstances serve little purpose to expend the panel's and the parties' resources in an exercise which will have no impact on the ultimate outcome of the decision process. Indeed, in the majority's view, requiring a respondent that consents to the requested relief to substantively respond to a complaint or face a decision and adverse findings based on the aversions of the complainant, does not necessarily further the UDRP's interest in providing an expedited economical procedure for resolving domain name disputes.
Having found that the Complainant has rights in the at-issue mark, the majority does not see any basis warranting further substantive analysis into the paragraph 4(a) elements regarding rights or legitimate interests and bad faith. The majority considers that this Panel's first and foremost function is to determine whether or not the Complainant should, or should not, be granted the particular relief it requests. An important goal of the operative UDRP expedited procedure that guides a panel to its decision is judicial economy. That goal commands that the majority should proceed to its decision since the Respondent's consent to relief dissolves any prior dispute, if any, between the parties.
Said again, the very purpose of the UDRP is to expeditiously and economically resolve disputes between trademark holders and domain name registrants.
As mentioned above, a panel's only purpose in rendering substantive paragraph 4(a) findings is relegated to that end, and that end alone. Advisory opinions are not authorized by the Policy, Rules, or otherwise. Likewise, discussion of the elements of the case unnecessary to decide the case may in some circumstances be considered superfluous (e.g., unless a complainant specifically sought to have a record of a respondent's conduct).
The foregoing leads the majority to conclude then that the primary and sufficient basis for granting relief to the Complainant, where as here, the Respondent consents to such relief, is to agree to this course. The sufficiency of consent and the charge of judicial economy lead the majority to conclude, without more, that it is appropriate to grant the request to transfer under Rule 10.
7. Decision
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 <maebashitokyuinn.com> be transferred to the Complainant.
I respectfully dissent from the approach taken by the majority in the present case that the Panel should simply endorse the Respondent's willingness to transfer the disputed domain name by directing a transfer without considering the merits.
The treatment of a unilateral consent to transfer was considered in The Cartoon Network LP, LLLP v. Mike Morgan,
WIPO Case No. D2005-1132 where it was stated:
“A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claim. (see Williams-Sonoma, Inc. v. EZ-Port,
WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri,
WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group,
WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,
WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke Philips Electronics N.V. v. Manageware,
WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen,
WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co,
WIPO Case No. D2003-0745).
I find it appropriate in the circumstances to proceed to a decision. I believe that notwithstanding the Respondent's consent to transfer that the facts of the case are such as to warrant a finding being made. This is in line with previous panel decisions in Davis + Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc. / Demand Domains Inc,
WIPO Case No. D2008-1162; Sassybax, L.L.C. v. Texas International Property Associates,
WIPO Case No. D2007-1190; and Messe Frankfurt GmbH v. Texas International Property Associates,
WIPO Case No. D2008-0375. If the purpose of the Policy is to counter abusive domain name registration and cybersquatting, then it seems that it is important in this kind of case to issue a decision on the merits, as otherwise, if found to be in breach of the Policy, a respondent will not be dissuaded from this kind of activity and in the event that that respondent engages in similar conduct in the future, then a future panel will not be able to decide the case in light of a full record of that respondent's past conduct.
A. Identical or Confusingly Similar
The Complainant provided substantial evidence of its rights in the marks TOKYU and TOKYU INN CHAIN, and it indeed appears that the Complainant enjoys a substantial reputation in its marks. Forming a domain name, such as the disputed domain name here, by including a city name (here Maebashi) to the Complainant's mark (here being “TOKYU”) is insufficient to dispel user confusion from inevitably occurring: PepsiCo, Inc. v. QWO,
WIPO Case No. D2004-0865.
It is well established that the specific top level domain, in this case “.com”, is not an element of distinctiveness that can be taken into account when evaluating the identity and confusing similarity of the Complainant's trademark and the disputed domain name; Belo Corp. v. George Latimer,
WIPO Case No. D2002-0329.
Therefore, the disputed domain name is confusingly similar to the Complainant's mark under paragraph 4(a)(i). The Respondent does not dispute the Complainant's contentions in this respect.
B. Rights or Legitimate Interests
It is the Complainant's burden to prove that the Respondent lacks rights or legitimate interests. Document Technologies, Inc. v. International Electronic Communications, Inc.,
WIPO Case No. D2000-0270. Because it is difficult to produce evidence to support a negative statement, the threshold for the Complainant to prove a lack of rights or legitimate interests is low. Once a prima facie case is shown, the burden of proof then shifts to the respondent who must demonstrate its rights or legitimate interests to the Panel.
In this case, I have found that the disputed domain name is confusingly similar to a mark in which the Complainant has rights. There is no suggestion of the Respondent, or any business or organization operated by the Respondent, being commonly known by the disputed domain name, and the Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the Complainant's trademarks. The Complainant has, therefore, fulfilled its obligations under paragraph 4(a)(ii) of the Policy. The Respondent did not deny these assertions in its Response any way.
Accordingly, the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Respondent contends that it acted in good faith. In support of this argument, the Respondent contends that it did not have actual knowledge of the Complainant until notification of this dispute. The Respondent also contends that it sought to transfer the disputed domain name to the Complainant.
The Respondent has a history of registering domain names and then either not responding to administrative proceedings brought against it (Peek & Cloppenburg KG v. Whois Privacy Service, Inc. / Demand Domains,
WIPO Case No. D2007-0019) or agreeing to the transfer of a disputed domain name in its response, although not actually achieving any such voluntary transfer prior to appointment of a Panel (Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains, Inc.,
WIPO Case No. D2007-0917).
The Respondent denies any actual knowledge of the Complainant and its mark when it acquired the disputed domain name. The Complainant in this case is widely known and as I have found, significant reputation attaches to its name and marks. The only conceivable purpose for the Respondent to have registered the disputed domain name was to benefit from the reputation of the Complainant's mark, by misdirecting Internet traffic to the Respondent's website in order to generate click through revenue. The use and exploitation of trademarks to obtain click through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy: L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,
WIPO Case No. D2005-0623. This finding is supported by the fact that the Respondent uses the disputed domain name to provide links to direct competitors of the Complainant.
In any event, even if the Respondent did not have actual knowledge of the Complainant and its marks, the Respondent should have known of the Complainant's rights. A number of prior cases under the policy have found that a finding of bad faith may be made where a respondent should have been aware of a complainant and wilfully avoided finding out. It was held by the Panel in Grundfos A/S v. Texas International Property Associates,
WIPO Case No. D2007-1448 that those who register domain names and particularly those who register domain names in large numbers are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners. That responsibility derives from paragraph 2 of the Policy, and in particular the words: “It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights”. The three-member panel in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,
WIPO Case No. D2007-1141 adopted an even stronger position on the obligations of professional domainers in the discharge of their obligations under paragraph 2 of the policy.
The Panel in that case said:
“Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge, . . . an even more thorough search would also include search engine searches to see what new websites may exist that use a name identical or confusingly similar to the domain name at issue even in the absence of a trademark application or registration. . . . Similarly, Yahoo! and Google offer highly effective search engines to determine the most relevant references on the Internet in response to a particular search term. Searching of this kind is particularly appropriate for companies that operate [pay-per-click] landing pages. . . . In this context, registrants that run [pay-per-click] landing page businesses cannot be willfully blind to whether the domain names they register are similar to trademarks and are pulling up [pay-per-click] advertising related to those trademark rights. . . . [I]t is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the [pay-per-click] landing page business, must have been aware of the relevant trademark”.
Therefore, I am satisfied that the Respondent registered and has used the disputed domain name in bad faith under paragraph 4(b)(iv).
This finding of bad faith is further supported by the fact that the Respondent was ordered to transfer domain names to the respective complainant in at least four earlier proceedings where registration and use in bad faith were established. The Respondent, therefore, acted in a pattern of preventing owners of a trademark from reflecting their marks in a corresponding domain name under paragraph 4(b)(ii) of the Policy.
Consequently, the Respondent registered and used the disputed domain name in bad faith, and the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. I, therefore, agree with the majority decision that the disputed domain name should be transferred to the Complainant, but not as an automatic consequence of consent and rather after a full consideration of the merits, as outlined above.
Alistair Payne Presiding Panelist (Dissenting)
Dated: December 8, 2008
Stay updated! Get new cases and decisions by daily email.
