Seiko Kabushiki Kaisha d/b/a Seiko
Corporation v. CS into Tech
Claim
Number: FA0309000198795
Complainant is Seiko Kabushiki Kaisha d/b/a Seiko Corporation, Tokyo, Japan (“Complainant”) represented by Lawrence Rosenthal, of Stroock & Stroock & Lavan, LLP., 180 Maiden Lane, New
York, NY 10038. Respondent is CS into Tech, Baekseok-dong, Goyang Si
Ilsan-gu, Gyeonggi-do, Daelim, KR 411360 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <seiko.net>, registered with Today and
Tomorrow Co. Ltd.
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
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 26, 2003; the Forum received a hard copy of the
Complaint on September 30, 2003.
On
October 9, 2003, Today and Tomorrow Co. Ltd. confirmed by e-mail to the Forum
that the domain name <seiko.net> is registered with Today and
Tomorrow Co. Ltd. and that Respondent is the current registrant of the name. Today
and Tomorrow Co. Ltd. has verified that Respondent is bound by the Today and
Tomorrow Co. Ltd. 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
October 23, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 12, 2003 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@seiko.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 24, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin 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."
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 makes the following assertions:
1. Respondent’s <seiko.net>
domain name is identical to Complainant’s SEIKO mark.
2. Respondent does not have any rights or
legitimate interests in the <seiko.net> domain name.
3. Respondent registered and used the <seiko.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds numerous registrations for the SEIKO mark with the Japan Patent Office
(e.g., Reg. Nos. 175840, 3009405, 3041068, 3041069). Complainant also has numerous registrations relating to the SEIKO
mark with the Korean Trademark Register (e.g., Reg. Nos. 30367, 41278, 71460,
71657) and the United States Patent and Trademark Office (e.g., Reg. Nos.
686264 and 1159088.). These
registrations were all issued prior to Respondent’s registration of <seiko.net>. Complainant has used the SEIKO mark as a
trade name throughout the world for many years. The SEIKO mark has been used in interstate commerce within
the United States since 1949.
Complainant has made considerable efforts and expenditures in marketing
its products and services in the United States since 1970. Complainant has established goodwill in
connection with the SEIKO mark. On
December 26, 2001, counsel for Complainant sent a letter to Respondent, demanding
that Respondent desist from offering the the disputed domain name for sale and
that Respondent agree to transfer the domain name to Complainant. Complainant received no response from
Respondent.
Respondent
registered <seiko.net> on August 30, 2001. Prior to December 26, 2001, Respondent’s
domain name <seiko.net> consisted of an “under construction” page,
which stated the domain name was for sale.
On January 21, 2002, Respondent removed the offer for the domain name’s
sale. Respondent transfered the
disputed domain name to a new registrar between July 1, 2003 and September 23,
2003. During this period, the <seiko.net>
domain name directed Internet users to <seek2.com>, owned by a third
party and containing no content relating to the name. After the filing and service of the Complaint, the registration
for <seiko.net> was assigned to a new entity. The new entity contains the same e-mail
contact information as was listed prior to the assignment. Therefore, the Panel presumes that the
current registration holder is the same entity.
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.
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 has established rights in the SEIKO mark through worldwide
registrations and continuous use.
The disputed
domain name is identical to the SEIKO mark because Respondent has merely added
a top-level domain name to the mark. See Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June
27, 2000) finding that <toshiba.net> is identical to Complainant’s
TOSHIBA trademark; see also Nike, Inc. v. Coleman, D2000-1120 (WIPO
Nov. 6, 2000) finding <nike.net> identical to Complainant’s famous NIKE
mark; see also Little Six, Inc. v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) finding <mysticlake.net> identical
to Complainant’s MYSTIC LAKE trademark and service mark.
Respondent has
not asserted any rights or legitimate interests in the domain name. Therefore, the Panel may draw adverse
inferences from Respondent’s failure to respond to the Complaint. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint; see also Vert. Solutions Mgmt., Inc. v.
Webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
Respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of Complainant to be deemed true; see also G.D. Searle v. Martin Mktg., FA 118277 (Nat.
Arb. Forum Oct. 1, 2002) where Complainant has asserted that Respondent has no
rights or legitimate interests with respect to the domain name, it is incumbent
on Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”; see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (Respondents’ failure to respond can
be construed as an admission that they have no legitimate interest in the
domain names).
There is no evidence
that Respondent has ever been commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii).
Additionally, the WHOIS registration information fails to imply that
Respondent is commonly known by the name.
See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) in determining that Policy ¶
4(c)(ii) does not apply, “nothing in Respondent’s WHOIS information implies
that Respondent is ‘commonly known by’ the disputed domain name”; see
also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (Respondent does
not have rights in a domain name when Respondent is not known by the mark).
Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) (Respondent’s
use of Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services); see also
Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000)
finding no legitimate use when Respondent was diverting consumers to its own
website by using Complainant’s trademarks); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) (“unauthorized providing of information and services under
a mark owned by a third party cannot be said to be the bona fide offering of
goods or services”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use.
Furthermore,
Respondent attempted to sell the disputed domain name for approximately five
months after registration, which under the circumstances, is additional
evidence that Respondent lacks rights and legitimate interests in the name
pursuant to Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(Respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) finding no rights
or legitimate interests where Respondent registered the domain name with the
intention of selling its rights; see
also J. Paul Getty Trust v.
Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (rights
or legitimate interests do not exist when one has made no use of the websites
that are located at the domain names at issue, other than to sell the domain
names for profit); see also Mothers
Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (under the circumstances, Respondent’s apparent willingness to dispose of
its rights in the disputed domain name suggested that it lacked rights
or legitimate interests in the domain name).
Policy ¶ 4(b),
pertaining to bad faith registration and use, contains indicators of bad faith,
but is non-exclusive. See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b)
sets forth certain circumstances, without limitation, that shall be evidence of
registration and use of a domain name in bad faith; see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive”); see also Educ.
Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (the Policy
“indicates that its listing of bad faith factors is without limitation”).
Respondent
registered and used the disputed domain name, in bad faith, pursuant to Policy
¶ 4(a)(iii), because it reasonably should have known about Complainant’s famous
and widely-used SEIKO marks, and its infringement thereof. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration; see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the worldwide prominence of the mark and thus Respondent registered the
domain name in bad faith); see also Chanel, Inc. AG v. Designer
Exposure, D2000-1832 (WIPO Feb. 15, 2001) (Respondent's registration and
use of the famous CHANEL mark suggests opportunistic bad faith); see also Harrods Ltd. v. Harrod’s Closet
D2001-1027 (WIPO Sept. 28, 2001) where a mark is so obviously connected with
well-known products, its very use by someone with no connection to these
products can evidence opportunistic bad faith; see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
finding that the “domain names are so obviously connected with the Complainants
that the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”; see also
Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”.
Moreover,
Respondent registered and used the disputed domain name, in bad faith, pursuant
to Policy ¶ 4(b)(i) because it appears it initially registered and used the
name for the sole purpose of its eventual sale. See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) finding bad
faith where Respondent offered domain names for sale; see also Banca
Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) finding
bad faith where Respondent offered the domain names for sale; see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) finding that “general offers to sell the domain
name, even if no certain price is demanded, are evidence of 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 <seiko.net> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
December 6, 2003
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