Oki Electric Industry Co., Ltd. v. Elizabeth Dobson
Claim Number: FA2203001989201
Complainant is Oki Electric Industry Co., Ltd. (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Elizabeth Dobson (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <okiconnectedprint.com>, registered with Internet Domain Service BS Corp.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Michael A. Albert, Dawn Osborne and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 22, 2022; the Forum received payment on March 22, 2022.
On March 23, 2022, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <okiconnectedprint.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@okiconnectedprint.com. Also on March 23, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent’s Default.
On April 21, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert, Dawn Osborne and Dennis A. Foster (Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant, a company based in Japan, is a worldwide leader in computer printer hardware and related printing services. In connection with its global computer business, Complainant has registered its OKI trademark throughout the world, including with the United States Patent and Trademark Office (“USPTO”).
- The disputed domain name, <okiconnectedprint.com>, is confusingly similar to Complainant’s OKI trademark, because the disputed domain name merely combines that mark with the generic terms “connected” and “print” along with the “.com” generic top-level domain (“gTLD”).
- Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not an authorized user or licensee of the OKI mark. Moreover, Respondent is not commonly known by the disputed domain name, and uses that name neither for any bona fide offering of goods or services nor for any legitimate noncommercial or fair use. Instead, the disputed domain name directs internet users to Respondent’s website, which is passed off as Complainant’s website but also includes links to online gambling websites.
- The disputed domain name was registered and is being used in bad faith. Respondent registered the disputed domain name with knowledge of Complainant’s trademark and rights. Moreover, Respondent’s intent is to profit from internet user confusion as to ownership/endorsement of the disputed domain name's resolving website, which contains linkage to online gambling websites. Respondent also used a privacy service in a bad faith effort to delay Complainant’s ability to initiate this proceeding.
B. Respondent
- Respondent failed to submit a Response in this proceeding.
Complainant is a Japan-based company that conducts business in computer printer hardware and related printing services throughout the world. It operates that business under its OKI trademark, which is registered in many countries and regions, including with the USPTO (e.g., Reg. No. 4,593,286, registered Aug. 26, 2014).
Respondent registered and owns the disputed domain name, <okiconnectedprint.com>, which was created on November 10, 2020. The disputed domain name resolves to a website that resembles that of the Complainant, but also contains links to online gambling websites.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a Response, the Panel will make its decision on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences that it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint, but the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided the Panel with clear evidence that Complainant possesses a valid USPTO registration for the OKI trademark, which leads the Panel to find that Complainant has the necessary rights in that mark to satisfy Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 1954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i).”); see also Innomed Technologies, Inc. v. DRP Services, FA 221171 (Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”).
The Panel can see plainly that the disputed domain name, <okiconnectedprint.com>, is not identical to Complainant’s much shorter trademark OKI. However, the Panel notes that the disputed domain name contains the full OKI trademark as the first and primary term, followed by two descriptive terms, “connected” and “print,” which are directly related to Complainant's offerings under that mark and thus increase the likelihood of confusion. Moreover, the addition of the “.com” gTLD offers no meaningful distinction in the Panel's comparison of the disputed domain name to the mark, since such suffixes are required of all domain names. As a consequence, and in line with many prior UDRP decisions under similar circumstances, the Panel determines that the disputed domain name is confusingly similar to Complainant's OKI trademark. See International Business Machines Corporation v. Tropic Management Systems Ltd., D2021-0939 (WIPO May 28, 2021) (finding <ibmbluedirect.com> to be confusingly similar to the IBM trademark); see also Bayerische Motoren Werke AG v. Henry Metcalf, D2009-1678 (WIPO Jan. 21, 2010) (finding <bmwapprovedusedcars.com> to be confusingly similar to the BMW mark, and opining that: “The addition of generic words to trademarks has been considered in numerous UDRP decisions not to prevent confusing similarity between a [disputed] Domain Name and a trademark.”).
Accordingly, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has demonstrated that the disputed domain name is confusingly similar to the OKI trademark and contended forcefully that Respondent has not been authorized or licensed by Complainant to use that mark. As a result, Complainant has sustained a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden to Respondent to establish such rights or interests. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); see also Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
Respondent having failed to file a Response, the Panel will examine the Complaint with respect to Policy ¶ 4(c) to determine whether there is any reason to believe that Respondent could possibly sustain the burden referred to above.
The Complaint presents satisfactory evidence that the disputed domain name resolves to a website that mimics Complainant’s website and adds offerings of online gambling website links. The Panel finds that this use of the disputed domain name comports with neither “a bona fide offering of goods or services” per Policy ¶ 4(c)(i), nor “a legitimate noncommercial or fair use” per Policy ¶ 4(c)(iii). See Developing Hearts Systems, Inc. v. Mihail Rudenko, FA 915557 (Forum Mar. 23, 2007) (“Respondent is using the [ disputed] domain name to display hyperlinks promoting various online gambling websites [. . .] the Panel finds Respondent’s use of the [disputed] domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, the Panel sees no reason to believe that Respondent, Elizabeth Dobson, has ever been commonly known as the disputed domain name <okiconnectedprint.com>. Therefore, the Panel concludes that Policy ¶ 4(c)(ii) is also inapplicable to the case at hand.
Having seen no plausible rationale in the case record to conclude otherwise, the Panel finds that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name.
Policy ¶ 4(b)(iv) states that a UDRP panel may find, as conclusive evidence of bad faith registration and use of a disputed domain name, the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 the respondent’s website or location.
In this case, the Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s OKI mark in an intentional attempt to confuse internet users as to that name's relationship to Complainant and its mark. Moreover, the Panel determines that the disputed domain name's deceptive redirection of internet users to Respondent’s website, which offers links to online gambling websites, is deliberately designed for Respondent’s commercial gain. Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (“Respondent has used a misspelling of Complainant's mark in a [disputed] domain name that resolves to a gambling site, for which Respondent undoubtedly receives compensation. As Respondent has used the domain name to attract users to the web site for commercial gain, Respondent’s practices constitute bad faith registration and use under Paragraph 4(b)(iv) of the Policy.”).
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <okiconnectedprint.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dawn Osborne, Panelist
Dennis A. Foster, Chair
Dated: May 2, 2022
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