Mitsubishi Shoji Kabushiki Kaisha d/b/a Mitsubishi Corporation and Mitsubishi Shoji Kaisha, Limited v. Rob Carless
Claim Number: FA1001001301949
Complainant is Mitsubishi Shoji Kabushiki Kaisha d/b/a Mitsubishi
Corporation and Mitsubishi Shoji
Kaisha, Limited (“Complainant”),
represented by Mark Sommers, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mitsubishichicago.com>, registered with Answerable.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On January 8, 2010, Answerable.com confirmed by e-mail to the National Arbitration Forum that the <mitsubishichicago.com> domain name is registered with Answerable.com and that Respondent is the current registrant of the name. Answerable.com has verified that Respondent is bound by the Answerable.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 15, 2010, a Written Notice of the Complaint, setting a deadline of February 4, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mitsubishichicago.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <mitsubishichicago.com> domain name is confusingly similar to Complainant’s MITSUBISHI mark.
2. Respondent does not have any rights or legitimate interests in the <mitsubishichicago.com> domain name.
3. Respondent registered and used the <mitsubishichicago.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Mitsubishi Shoji Kabushiki Kaisha, d/b/a Mitsubishi Corporation and Mitsubishi Shoji Kaisha, Limited join as Complainant. Complainant is one of the world’s largest conglomerates that offers a wide range of products and services including transportation services, industrial energy plants, automobiles, ships, ship services, railway development, agriculture machinery, construction, elevators, power generation equipment, aerospace equipment, satellite imagery, and maps. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MITSUBISHI mark (e.g., Reg. No. 1,624,379 issued November 27, 1990).
Respondent registered the <mitsubishichicago.com> domain name on June 26, 2006 after Complainant’s registration of the disputed domain name inadvertently lapsed for non-payment. Respondent’s disputed domain name resolves to a website displaying third-party links to websites offering automobile products in competition with Complainant.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant owns multiple trademark registrations for the
MITSUBISHI mark with the USPTO. The
Panel finds that Complainant has established rights in the MITSUBISHI mark for
purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Metro. Life
Ins. Co. v. Bonds, FA
873143 (Nat. Arb.
Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web
Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for
the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark
is registered in a country other than that of the respondent’s place of
business).
Respondent’s <mitsubishichicago.com> domain name is confusingly
similar to Complainant’s MITSUBISHI mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s
mark in its entirety, adds the geographically descriptive location “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts Respondent is not commonly known by the disputed domain name. As proof, Complainant offers the WHOIS information, which lists the registrant as “Rob Carless.” The Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed
domain name resolves to a website featuring click-through links and
advertisements for Complainant’s competitors in the automobile industry. The Panel finds that Respondent’s use of the disputed domain name to redirect
Internet users to Complainant’s competitors, presumably for financial gain, is
not constitute a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Expedia,
Inc. v. Compaid, FA
520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s
use of the <expediate.com> domain name to redirect Internet users to a
website featuring links to travel services that competed with the complainant
was not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)); see also
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar
domain name to divert Internet users to competing websites does not represent a
bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
In addition,
Complainant presents evidence that Complainant had control of the disputed
domain name from 2001 through 2006, until registration lapsed due to
non-payment. Subsequently, Respondent
registered the disputed domain name. The
Panel finds that Respondent’s registration of the disputed domain name after
Complainant’s registration of the disputed domain name lapsed due to
non-payment is further evidence that Respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See RH-Interactive
Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16,
2003) (“Complainant’s prior registration of the domain name, coupled with
Respondent’s failure to respond to this dispute, is evidence that Respondent
has no rights or legitimate interests in the domain name pursuant to Policy
4(a)(ii).”); see also Zappos.com,
Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005)
(“[T]he fact that Complainant had previously held the <wwwzappos.com>
domain name registration and has mistakenly allowed it to expire is further
evidence that Respondent lacks rights and legitimate interests in the domain
name under Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that
promotes Complainant’s competitors in the automobile industry through
click-through links. Such an activity
clearly disrupts Complainant’s business, as Internet users seeking Complainant’s
products will be redirected to Complainant’s competitors. This qualifies as bad faith registration and
use under Policy ¶ 4(b)(iii). See
The Panel infers that Respondent receives click-through fees from the use of the aforementioned hyperlinks. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and the resolving website. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
In addition, Respondent’s subsequent registration of the disputed domain name after Complainant’s registration of the disputed domain name lapsed is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mitsubishichicago.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 2, 2010
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