Komatsu America Corp. v. Komatsu Book / Space
Claim Number: FA1703001719972
Complainant is Komatsu America Corp. ("Complainant"), represented by Christopher M. Dolan of Barnes & Thornburg LLP, Illinois, USA. Respondent is Komatsu Book / Space ("Respondent"), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <komatsubook.com>, registered with 1&1 Internet SE.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2017; the Forum received payment on March 6, 2017.
On March 5, 2017, 1&1 Internet SE confirmed by email to the Forum that the <komatsubook.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@komatsubook.com. Also on March 7, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 Default.
On April 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
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 is the American subsidiary of Komatsu Limited, an equipment manufacturer and distribution company established in 1920. Complainant's parent company owns and uses KOMATSU and related marks in connection with this business. Complainant holds an exclusive license to use the KOMATSU marks in the United States and in various other countries in connection with construction, mining, utility, and related equipment and services. Complainant claims common-law rights in the marks as well as rights by virtue of trademark registrations in the United States and throughout the world.
Respondent registered the disputed domain name <komatsubook.com> in June 2016 through a privacy registration service. Complainant alleges that Respondent is using the domain name for a website that prominently displays Complainant's trademarks, logo, and other intellectual property in a manner designed to confuse Internet users, possibly as part of a fraudulent phishing scheme. Complainant states that Respondent is not authorized to use Complainant's marks and has never been known by the mark or disputed domain name. Complainant contends on these grounds that the disputed domain name is confusingly similar to Complainant's KOMATSU marks; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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(f), 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 (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.").
The disputed domain name <komatsubook.com> combines Complainant's registered mark KOMATSU with the generic term "book" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark for purposes of the Policy. See, e.g., Yahoo! Inc. v. Michael Herlache, FA 1660699 (Forum Mar. 9, 2016) (finding <yahoobook.com> confusingly similar to YAHOO!); Komatsu Ltd. & Komatsu America Int'l Co. v. RKWeb Ltd., D2000-0995 (WIPO Nov. 13, 2000) (finding <komatsuparts.com> identical or confusingly similar to KOMATSU). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, the complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been for a website that makes unauthorized use of Complainant's mark and other intellectual property, either as part of a phishing scheme or to promote competing goods or services. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Illumina, Inc. v. Robert Chave, FA 1717634 (Forum Mar. 20, 2017); Quicken Loans Inc. v. Domain Admin / Whois Privacy Corp., FA 1713986 (Forum Mar. 2, 2017).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name to promote competing goods or services or as part of a fraudulent phishing scheme, is indicative of bad faith under the Policy. See, e.g., Illumina, Inc. v. Robert Chave, supra; Quicken Loans Inc. v. Domain Admin / Whois Privacy Corp., supra. Respondent's attempt to shield its identity through the use of a privacy service, although not itself a conclusive indicator of bad faith, lends further support to this conclusion. See, e.g., Vanity Shop of Grand Forks, Inc. v. Adolfo Meza / Blaze's Shop, FA 1712133 (Forum Feb. 14, 2017). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <komatsubook.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 11, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page