WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dyson Technology Limited v. Takuya Jin

Case No. D2017-2068

1. The Parties

The Complainant is Dyson Technology Limited of Wiltshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by Gowlings (UK) LLP, United Kingdom.

The Respondent is Takuya Jin of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <dysonairwrap.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2017. On October 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2017.

The Center appointed William R. Towns as the sole panelist in this matter on December 1, 2017. 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, a limited liability corporation headquartered in the United Kingdom, is a designer of innovative vacuum cleaners and other products sold under the DYSON trademark. The Complainant has used the DYSON mark in commerce since 1993, and has registered the DYSON mark in numerous jurisdictions, including the European Union ("EU") Trade Mark No. 006305262, with a registration date of August 17, 2010; the UK Trademark No. UK00002195429, registered on October 29, 1999; and Japanese Trademark No. 5467438, with a registration date of February 3, 2012. The Complainant also owns UK trademark registrations for DYSON AIRWRAP, Trademark No. UK00003235858, and AIRWRAP, Trademark No. UK00003235857, both registered effective as of June 7, 2017, and entered in the register on August 25, 2017. The Complainant filed applications to register its DYSON AIRWRAP and AIRWRAP marks in Japan on June 9, 2017.

The Respondent registered the disputed domain name <dysonairwrap.com> on June 9, 2017, the same day the Complainant filed its applications to register the DYSON AIRWRAP and AIRWRAP marks in Japan, and two days after the Complainant's filing of its application to register the DYSON AIRWRAP and AIRWRAP marks in the UK.¹ After becoming aware of the registration of the disputed domain name, the Complainant's representative contacted the Respondent on October 9, 2017, advising that a proceeding under the Policy likely would be brought absent a satisfactory explanation why the Respondent registered the disputed domain name in close proximity to the Complainant's filing of its application to register the DYSON AIRWRAP mark in Japan. The Respondent replied to the Complainant's representative on October 11, 2017, stating that the disputed domain name would not be transferred without payment, and offering to sell the disputed domain name to the Complainant for EUR 1,200. The Complainant in return offered to pay the Respondent's out-of-pocket registration costs in consideration of the transfer of the disputed domain name, to which the Respondent did not reply. The disputed domain name does not resolve to an active website.

The Respondent is not a stranger to the UDRP, having been named as a respondent in Sanofi and Sanofi Biotechnology v. Takuya Jin, WIPO Case No. D2016-2336, and BIOFARMA SAS v. Takuya Jin, WIPO Case No. D2016-2523. The UDRP panels in these cases each found from the evidence that the Respondent in bad faith registered a domain name identical or confusingly similar to the complainant's mark in order to sell the domain name to the complainant at an exorbitant price.

The Complainant has submitted evidence of the Respondent's registrations on June 8, 2017 and June 9, 2017, of some 20 domain names incorporating third-party trademarks. In each instance the domain names were registered by the Respondent within a few days of the trademark filing dates. This Respondent's registration of multiple domain names incorporating third-party marks in close proximity to the filing dates of these trademarks was noted by the panel in BIOFARMA SAS v. Takuya Jin, supra.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant's DYSON AIRWRAP mark. According to the Complainant, the Top-Level Domain ("TLD") ".com" should be disregarded when assessing whether the disputed domain name is identical or confusingly similar to the Complainant's mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise permitted to use DYSON or other DYSON AIRWRAP marks, and that the Respondent has no relationship to the Complainant. The Complainant further submits that the Respondent has not been commonly known by the disputed domain name. According to the Complainant, the disputed domain name resolves to a placeholder page stating it "is coming soon", but otherwise has not been used.

The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent clearly was aware of the Complainant's DYSON AIRWRAP mark when registering the disputed domain name. The Complainant submits that the Respondent adopted a domain name identical to the Complainant's DYSON AIRWRAP mark, and asserts that a deliberate infringement of another's mark cannot constitute a bona fide offering of goods or services.

The Complainant maintains that the Respondent has engaged in a pattern of registering domain names corresponding to third-party marks filed in close proximity to the trademark filing dates, order to sell the domain names to trademark owners for amounts greatly in excess of documented costs related to the domain names. The Complainant points to the UDRP panel decisions in Sanofi and Sanofi Biotechnology v. Takuya Jin, supra, and BIOFARMA SAS v. Takuya Jin, supra, in which bad faith in each case was found based on the Respondent's registration of a domain name identical or confusingly similar to the complainant's mark, and the Respondent's attempt sell the domain name to the complainant at an exorbitant price.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <dysonairwrap.com>is identical to the DYSON AIRWRAP mark and confusingly similar to the DYSON mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.² The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.

In this case, the Complainant's DYSON and DYSON AIRWRAP marks (referred to collectively as the "DYSON marks") are clearly recognizable in the disputed domain name.³ TLDs generally are disregarded when evaluating the identity or confusing similarity of the complainant's mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's DYSON marks. The Respondent notwithstanding has registered the disputed domain name, which is confusingly similar to the Complainant's marks, and which the Respondent sought to sell to the Complainant for EUR 1,200.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it 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 has been commonly known by the domain name, even if he has acquired no trademark 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 trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.

It is abundantly clear from the record that the Respondent was aware of the Complainant and had the Complainant's DYSON marks in mind when registering the disputed domain name. The Respondent registered the disputed domain name within days of the Complainant's filing of applications to register DYSON AIRWRAP in the UK and Japan. In view of the attendant circumstances, the Panel concludes that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainant's trademark rights, with the intention of selling the disputed domain name to the Complainant for an amount greatly in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name.

The Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(i) of the Policy. It is clear from the record in this case that the Respondent has engaged in cybersquatting. It is readily apparent from the relevant circumstances that the Respondent had the Complainant's DYSON marks in mind when registering the disputed domain name. When contacted by the Complainant, the Respondent attempted to sell the disputed domain name to the Complainant for EUR 1,200. The Panel concludes in view of the foregoing that the Respondent more likely than not registered the disputed domain name with the intention of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. 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 <dysonairwrap.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: December 12, 2017

¹ As the Panel appreciates UK law, a trademark registration is effective as of the date of the filing.

² See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.

³ See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.

⁴The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.