Crystal Mountain Manufacturing, Inc. v. Taro Yamada / Personal
Claim Number: FA1408001574863
Complainant is Crystal Mountain Manufacturing, Inc. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Taro Yamada / Personal (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greenhornetlighting.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2014; the National Arbitration Forum received payment on August 13, 2014. The Complaint was submitted in both English and Japanese.
On August 20, 2014, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the National Arbitration Forum that the <greenhornetlighting.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 August 25, 2014, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of September 15, 2014 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@greenhornetlighting.com. Also on August 25, 2014, the Japanese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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 (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 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
Complainant uses the GREEN HORNET mark in connection with its manufacturing and marketing efforts of lighting and electrical products. Complainant holds valid trademark registrations for the GREEN HORNET mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,188,155 registered July 31, 2012), and with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 813,267 registered Dec. 5, 2011). The <greenhornetlighting.com> domain name is confusingly similar to the GREEN HORNET mark.
Respondent lacks rights in the disputed domain name. Complainant has not authorized Respondent’s use of the mark. In addition, the disputed domain name resolves to a landing page containing advertisements to Complainant’s competitors in Japanese. Such use does not amount to a bona fide use, nor a legitimate noncommercial or fair use. In addition, Complainant previously used the <greenhornetlighting.com> domain name, but lost the domain due to inadvertent problems with its auto-renew system.
Respondent registered the disputed domain name in bad faith as evidenced by the use of the name in connection with a website promoting competitors of Complainant.
B. Respondent
Respondent did not submit a response. The <greenhornetlighting.com> domain name was registered on July 5, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making Japanese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings shall be conducted in English.
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 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.”).
Complainant uses the GREEN HORNET mark in connection with its manufacturing and marketing efforts of lighting and electrical products. Complainant claims valid trademark registrations for the GREEN HORNET mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,188,155 registered July 31, 2012), and with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 813,267 registered Dec. 5, 2011). Prior panels have found evidence of trademark registrations sufficient to indicate Policy ¶ 4(a)(i) rights regardless of whether the respondent resides in the registering jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). As such, the Panel agrees that Complainant’s registrations of the GREEN HORNET mark with the USPTO and CIPO evince Policy ¶ 4(a)(i) rights.
Complainant urges that the <greenhornetlighting.com> domain name is confusingly similar to the GREEN HORNET mark. The Panel notes that the domain name differs from the mark in three respects: the elimination of spacing; the addition of the descriptive term “lighting;” and the affixation of the generic top-level domain “.com.” The Panel agrees that such alterations are insufficient to negate confusing similarity under Policy ¶ 4(a)(i). See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant urges that it has not authorized Respondent’s use of the mark. The Panel also notes that the WHOIS information lists “Taro Yamada / Personal” as the domain name registrant. The Panel recalls that Respondent did not submit a response in this proceeding to refute these contentions. After considering the available record, the Panel agrees that Respondent does not appear to be commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant maintains that the disputed domain name resolves to a landing page containing advertisements to Complainant’s competitors in Japanese. The Panel observes that Complainant has failed to submit a landing page to corroborate this contention. In the absence of a Response, the Panel has used its discretion to make a visit to the website resolved by the disputed domain name. As a result, the Panel has found that Respondent currently uses the disputed domain name to divert Internet users to its own website, which simply features some information on the installation, operation and maintenance timing of vending machines in Japanese. It provides simple information on how to install, operate and maintain vending machines. The information does not contain any practically useful contents. It does not appear to offer any actual products and/or services under any specific brand or trade name. The Panel finds that this type of diversion of Internet users to the Respondent’s own website does not amount to a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant further explains that Complainant previously used the <greenhornetlighting.com> domain name dating back to 2011, but lost the domain due to inadvertent problems with its auto-renew system. Complainant includes a screenshot of Complainant’s prior website resolving from the now disputed domain name, as well as the relevant WHOIS record relating to <greenhornetlighting.com>. See Compl., at Attached Exs. H and G, respectively. The panel in Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005), wrote, “[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).” Accordingly, the Panel finds that Complainant’s prior holding and loss of the <greenhornetlighting.com> domain, coupled with Respondent’s subsequent registration, is further evidence that Respondent lacks Policy ¶ 4(a)(ii) rights in the domain.
Complainant argues that Respondent registered the disputed domain name in bad faith as evidenced by the use of the name in connection with a website promoting competitors of Complainant. As seen above, Respondent currently uses the disputed domain name to divert Internet users to its own website, which simply features simple information on the installation, operation and maintenance timing of vending machines in Japanese. It provides simple information on how to install, operate and maintain vending machines. The Panel notes and finds that Respondent is diverting Internet users to its own website by creating confusion with Complainant’s mark, and presumably profiting. The deliberate diversion of Internet users in such circumstances represents bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel recalls that Complainant claims to have previously held the <greenhornetlighting.com> domain name dating back to April 2011, but lost the name after the auto-renew system it was using misfired in 2014. Prior panels have found that the subsequent registration of a domain name that was previously held and used by a complainant may indicate bad faith. The Panel considers the case InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000), where the panel held, “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,” and finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greenhornetlighting.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 27, 2014
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