WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tadano Ltd. v. Stanley Pace / Xaichie Tadano

Case No. D2013-0865

1. The Parties

The Complainant is Tadano Ltd., of Kagawa, Japan, represented by Seiwa Patent & Law, Japan.

The Respondent is Stanley Pace of Flower Mound, Texas, United States of America / Xaichie Tadano of Quezon City, Philippines (collectively the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <tadano.com> was registered with Fabulous.com Pty. Ltd. (the “Previous Registrar”) at the time the Complaint was filed. The disputed domain name was subsequently transferred to a new registrar, Dynadot LLC (the “Current Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2013. On May 16, 2013, the Center transmitted by email to the Previous Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2013, the Previous Registrar transmitted by email to the Center its verification response disclosing that the registrar of the disputed domain name had changed since the Complaint was filed. On May 22, 2013, the Center transmitted by email to the Current Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2013, the Current Registrar transmitted by email to the Center its verification response disclosing that the registrant and contact information for the disputed domain name differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 23, 2013, providing the registrant and contact information disclosed by the current Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 27, 2013.

The Center verified that the Complaint and 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 on May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.

The Center appointed Andrew F. Christie as the sole panelist in this matter on June 24, 2013. 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.

4. Factual Background

The Complainant was established in 1948 and has been engaged in the production and sale of construction cranes, truck loader cranes, and aerial work platforms. The Complainant has many offices (including branch offices and sales offices) in Japan and has, as affiliated companies, 11 domestic subsidiaries and one domestic affiliate. Outside of Japan the Complainant has 15 overseas subsidiaries and two overseas affiliates, across Europe, North America, Asia and Oceania. Sales of the Complainant in the 2012 fiscal year reached about JPY 106.9 billion nonconsolidated and about JPY 134.8 billion consolidated. The Complainant held a 44.7% share of the domestic market for its main product, construction cranes, in 2012 (putting it at second place) and a 21.8% share of the global market (putting it at first place). It has spent many millions of JPY on advertising its product and expanding its business in Japan and overseas. There are many used-equipment vendor websites, in both the English language and the Japanese language.

The Complainant holds a large number of trademark registrations in Japan and around the world, including in the United States of America, for the word mark TADANO and for a device mark that contains the word “tadano” (together the “TADANO trademark”), in respect of construction cranes, truck loader cranes, aerial work platforms and related goods. The TADANO trademark was first registered in Japan in 1977 and in the United States of America in 1995.

The first-named Respondent, Stanley Pace, was disclosed by the previous Registrar’s WhoIs details as the registrant of the disputed domain name at the time the Complainant was flied. The second-named Respondent, Xaichie Tadano, was added as a Respondent to this case by way of the Complainant’s amendment to the Complaint, in response to the Current Registrar’s disclosure of this party as the registrant of the disputed domain name. The first-named Respondent had been in contact with the Complainant during a previous case under the Policy regarding the disputed domain name, Tadano Ltd. v. Whois Privacy Services Pty Ltd / Stanley Pace, WIPO Case No. D2012-2408. That previous case was terminated by the Panel, on the ground that the Respondent had filed proceedings in the Federal Court of Australia against the Complainant. The termination was stated to be “without prejudice to Complainant’s filing a new complaint under the Policy at any time following termination of the pending Declaratory Judgment action in Australia, but with prejudice if filed before that lawsuit is terminated”. The Australian court proceeding against the Complainant was withdrawn and discontinued by the first-named Respondent on April 3, 2013.

The disputed domain name was first registered on November 4, 1998. The Complainant has provided screenshots of the website to which the disputed domain name resolved on November 24, 2012. Those screenshots show that the website contained the statement “tadano.com – mobile crane service Resources and Information. This website is for sale!”, and provided links to various competitors of the Complainant, in a number of languages including Japanese and English. Since the filing of the Complaint, it appears that the disputed domain name no longer resolves to any website.

The Complaint was filed with the Center on the morning of May 16, 2013, in Geneva, Switzerland, the location of the Center. The request for registrar verification (by which the registrar is notified of the filing of the Complaint) was communicated by the Center to the Previous Registrar in the early evening of May 16, 2013, in Geneva, which was the early morning of May 17, 2013, in Fortitude Valley, Queensland, Australia, the location of the Previous Registrar. According to information provided by the Previous Registrar, the registration of the disputed domain name was transferred to the Current Registrar at sometime on May 17, 2013. According to information provided by the Current Registrar, the holder of the disputed domain name (i.e. the registrant of it) changed to the second-named Respondent at what appears to be the same time as the registration of the disputed domain name was transferred to the Current Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights because the generic Top-Level Domain (gTLD) extension “.com” has no special discriminating power, and the main part of the disputed domain name, “tadano”, is the same as the Complainant’s TADANO trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Complainant has not given the Respondent permission to use the disputed domain name or a domain name including the word “tadano”; (ii) the Respondent has not acquired rights to the Complainant’s TADANO trademark or to similar trademarks; (iii) there is no fact of the Respondent being generally known by the name “tadano.com” or the name “tadano”; (iv) the TADANO trademark is extremely famous in Japan and the rest of the world, including the United States of America, so it is inconceivable that the Respondent coincidentally employed this as the disputed domain name without knowing of the trademark or the Complainant; (v) the first-named Respondent, Stanley Pace, resides in Texas which is where the subsidiary of the Complainant, Tadano America Corp., is located and the Complainant believes that the first-named Respondent recognized the TADANO trademark when registering the disputed domain name; (vi) the Respondent has established various links at the website to which the disputed domain name resolves to websites of competitors of the Complainant, such as used equipment vendors of the Complainant’s products, and has therefore obtained economic benefits by obtaining a “free ride” from the fame and reputation of the Complainant; (vii) the links on the website to which the disputed domain name resolves change in accordance with the language of the Internet user, indicating that the Respondent is clearly trying to increase the number of accesses to those links; and (viii) the Respondent is, for economic gain, guiding Internet users interested in the Complainant’s products, who view a domain name the same as the Complainant’s trademark, to misunderstand that the website to which it resolves is a legitimate website of the Complainant or that it has a legitimate connection with the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) on March 8, 2011, the website to which it resolved indicated that the domain name “may be for sale by its owner!” and provided a link to the <sedo.com> website where prospective purchasers can submit their offer to purchase the domain name; (ii) it is believed that the first-named Respondent, Stanley Pace, knew of the TADANO trademark and that he applied for registration of the disputed domain name to obtain a “free ride” from the fame of the Complainant; (iii) the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of a product or service on the Respondent’s website; (iv) on May 24, 2011, the Complainant sent a letter to Stanley Pace, who at that time was listed as the registrant of the disputed domain name, pointing out that his actions were highly liable to be violating trademark and unfair competition laws, and sought cessation of the operation of the website to which it resolved; however the letter failed to be delivered to the contact address listed, and was returned to the Complainant; (v) Stanley Pace has been the respondent in at least 11 domain name disputes under the Policy, in which he has used the domain names, the subject of those disputes, to establish websites with links to other websites offering the sale of products competing with the products of the complainants in those cases, and in all but one (which was terminated), the transfer of the domain names to the complainants has been ordered; (vi) detailed information on the true owner of the disputed domain name could not be obtained by the Complainant, thus supporting the illegitimate purposes of the Respondent; (vii) the Complainant has received enquiries about settlement by monetary means from the first-named Respondent, Stanley Pace, and has informed the first-named Respondent it has no intention of negotiating a monetary settlement for the disputed domain name; and (viii) on December 7, 2012, the Complainant submitted a Complaint to the Center regarding the disputed domain name, but this was terminated by the panel due to the first-named Respondent, Stanley Pace, filing proceedings against the Complainant in the Federal Court of Australia that were subsequently withdrawn prior to the hearing, indicating that the Respondent has no intention to use the disputed domain name for legitimate purposes and has registered it and is using it for illegitimate purposes.

B. Respondent

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

6. Procedural Issues

A. Change of Domain Name Holder (Registrant) Subsequent to Filing of Complaint

According to information provided by the Previous Registrar, the registration of the disputed domain name was transferred to the Current Registrar at sometime on May 17, 2013, which is after the filing of the Complaint. It appears that the holder (registrant) of the disputed domain name was changed from the first-named Respondent to the second-named Respondent at the same time as the Current Registrar became the registrar of the disputed domain name.

Paragraph 8(a) of the UDRP provides: “You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.”

It is clear, therefore, that where a transfer to a new holder (registrant) occurs during an administrative proceeding under the UDRP, that transfer is capable of being canceled. The Panel notes that in at least one decision under the Policy, F. Hoffmann-La Roche AG v. Isakov Aleksandr,WIPO Case No. D2012-1449, a panel has ordered the registrar of a domain name that was transferred to another holder (registrant) during an administrative proceeding to cancel the transfer.

It must be noted, however, that the power of a registrar to cancel a transfer appears, as a practical matter, to be conditional on that registrar remaining the registrar of the domain name. As is discussed below, where a transfer of a domain name to a new holder (registrant) occurs at the same time as a transfer of that domain name to a new registrar, the old registrar may no longer have power to cancel the transfer to the new holder (registrant).

B. Change of Domain Name Registrar Subsequent to Filing of Complaint

Paragraph 8(b) of the UDRP contains a prohibition on transfer to a new registrar during an administrative proceeding similar to the prohibition on transfer to a new holder (registrant) contained in paragraph 8(a). However, unlike paragraph 8(a), paragraph 8(b) does not expressly state that the registrar reserves the right to cancel any transfer of a domain name registration to another registrar made in violation of the prohibition. The reason for the lack of such a reservation to cancel the transfer seems to be that, once a transfer to a new registrar occurs, the old registrar may no longer have any registration under its control on which it could act, under the UDRP, to cancel the transfer. It seems, therefore, that the UDRP does not – because it cannot, practically speaking – make provision for cancelation of a transfer to a new registrar during an administrative proceeding under the UDRP. The upshot appears to be that where a transfer to a new registrar occurs during an administrative proceeding under the UDRP, that transfer is not capable of being cancelled under the UDRP even though it also involves a transfer to a new holder (registrant) contrary to paragraph 8(a) of the UDRP.

It does not follow, however, that action could never be taken in relation to a transfer of a domain name registration to a new registrar in breach of paragraph 8(b) of the UDRP. Internet Corporation for Assigned Names and Numbers (ICANN) policies other than the UDRP – such as the Policy on Transfer of Registrations between Registrars, and the Registrar Transfer Dispute Resolution Policy – may be applicable in such circumstances. Furthermore, the old registrar and the new registrar might agree between themselves as a part of the resolution of a matter under an ICANN Consensus Policy or otherwise to rescind a transfer that has been made in breach of paragraph 8(b) of the UDRP – something which appears to have occurred in at least one case under the UDRP: Verizon Trademark Services LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon, WIPO Case No. D2011-0247.

C. Cancelation of Changes of Registrant and Registrar

In this case, there was both a change of registrant (from the first-named Respondent to the second-named Respondent) and a change of registrar (from the Previous Registrar to the Current Registrar) subsequent to the filing of the Complaint. The Panel finds that both of these transfers were in breach of paragraph 8 of the UDRP. For the reasons explained above, the Panel considers that the Previous Registrar may have no power under the UDRP (as distinct from other possible mechanisms) to cancel either transfer, because it no longer has under its control any registration on which to act. Accordingly, the Panel declines to make an order under the UDRP against the Previous Registrar for cancelation of either transfer.

The Panel considers that the transfer of the disputed domain name from the first-named Respondent to the second-named Respondent, which appears to have occurred at the same time as the transfer of the registration from the Previous Registrar to the Current Registrar, is one which the Current Registrar has power to cancel, since that was in breach of paragraph 8(a) of the UDRP. However, the Panel declines to order the Current Registrar to cancel that transfer, for the simple reason that it is unnecessary to do so in the circumstances of this case. It is unnecessary to do so because of the conclusion to which the Panel has come on the merits of the Complaint. As explained below, the Panel finds that the Complainant has made out its case under the Policy, and as a result orders the Current Registrar to transfer the disputed domain name to the Complainant – an order that precludes the need for any other order.

D. Identity of Respondent to the Complaint

Following disclosure by the Current Registrar of the fact that the registrant of the disputed domain name changed to the second-named Respondent at what appears to be the same time as the registration of the disputed domain name was transferred to the Current Registrar, the Complainant amended the Complaint by adding the second-named Respondent as a respondent. The Panel considers it is appropriate for the Complaint to be brought against both the first-named Respondent and the second-named Respondent, for the following reasons.

Paragraph 1 of the Rules defines a “Respondent” to be “the holder of a domain-name registration against which a complaint is initiated”. As discussed above, the transfer of the disputed domain name registration from the first-named Respondent to the second-named Respondent was in breach of the UDRP, and is capable of being canceled by the Current Registrar under paragraph 8(a) of the UDRP. In such a situation, the Panel considers that both the transferring party (the first-named Respondent) and the receiving party (the second-named Respondent) can be considered to be the “holder” of the disputed domain name for the purposes of the UDRP. Accordingly, the Panel considers that both the first-named Respondent and the second-named Respondent are appropriately named as respondents to the Complaint.

E. Refiling of Complaint

The Complainant has expressly acknowledged the existence of an earlier case under the Policy, Tadano Ltd. v. Whois Privacy Services Pty Ltd / Stanley Pace, WIPO Case No. D2012-2408. The complainant in that earlier case is the same party as the Complainant in this case, the second-named respondent in that earlier case is the same party as the first-named Respondent in this case, and the domain name the subject of dispute in that earlier case is the same domain name as the disputed domain name in this case. Because that other case was terminated, rather than denied, the filing of this case does not strictly constitute a “refilling” of the earlier complaint, as that concept is defined and discussed in Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490, and other relevant cases under the Policy.

The earlier case was terminated expressly “without prejudice to Complainant’s filing a new complaint under the Policy at any time following termination of the pending Declaratory Judgment action in Australia”. This Complaint was filed on May 16, 2013, following termination of the Declaratory Judgment action in Australia on April 3, 2013. The termination of the earlier case does not, therefore, prejudice the filing of this Complaint. Furthermore, there is nothing in the case record before this Panel to indicate that the filing of this Complaint is an abuse of process under the Policy. Thus, this Panel finds that the filing of this Complaint is admissible under the Policy.

7. Discussion and Findings

A. Identical or Confusingly Similar

When the gTLD extension is ignored, the disputed domain name consists of the Complainant’s TADANO trademark. Thus, this Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its TADANO trademark. The Respondent has not provided any evidence that it has been commonly known by the disputed domain name, that it has made a bona fide use or demonstrable preparations for a bona fide use of the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to websites containing links that direct users to other websites relating to goods and/or services of competitors to the Complainant. According to the present record, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, in the absence of any evidence to the contrary from the Respondent, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was first registered 50 years after the establishment of the Complainant, two decades after first registration of the Complainant’s TADANO trademark, and three years after registration of the Complainant’s TADANO trademark in the United States of America (the place of residence of the first-named Respondent). The evidence on the record provided by the Complainant with respect to the use of its TADANO trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain name was registered (whether considered at the time of the first registration of the disputed domain name in 1998 or at the time of its most recent transfer subsequent to the filing of the present Complaint), the Respondent most likely knew of the Complainant’s TADANO trademark, and knew that it had no rights or legitimate interests in the disputed domain name. The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, or to attempt to attract, for commercial gain, Internet users to websites by creating confusion with the Complainant’s trademark as to the affiliation of those websites. The current “passive holding” of the disputed domain name, under the totality of the circumstances present in this case, does not prevent the Panel from finding bad faith use. The fact that there was a change of registrar and a change of holder (registrant) subsequent to the filing of the Complaint, both of which changes were in breach of Paragraph 8 of the UDRP, provides further evidence of bad faith on the part of the Respondent. For all these reasons, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tadano.com> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: August 5, 2013