WIPO

 

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kyocera Mita Corporation and Kyocera Mita America, Inc. v. Office Land

Case No. D2000-0385

 

1. The Parties

The complainants are Kyocera Mita Corporation of Osaka, Japan ("KMC") and Kyocera Mita America, Inc., of Fairfield, New Jersey, USA ("KMA"). KMC is the parent company of KMA.

The respondent is Office Land, of Van Nuys, California, USA.

 

2. The Domain Name(s) and Registrar(s)

The domain name in dispute is copystar.com.

The registrar is Network Solutions, Inc., of Herndon, Virginia, USA.

 

3. Procedural History

The complaint was filed by email at the WIPO Arbitration and Mediation Center ("the Center") on May 4, 2000 and in hard copy, accompanied by the prescribed payment, on May 10, 2000 (an earlier hard copy version and payment having been lost in transit). The Center acknowledged receipt of the complaint on May 11, 2000 and that day requested confirmation of the registration details from the registrar. These were provided by the registrar on May 14, 2000.

The registrar stated, inter alia, that it had received a copy of the complaint from the complainant; it is the registrar of the domain name copystar.com; the respondent is the registrant of that name; the registrarís "4.0 Service Agreement" is in effect and the domain name copystar.com is on "hold" status.

The Center satisfied itself on May 14, 2000 that all procedural requirements had been complied with and on May 18, 2000 notified the respondent by email and by courier of the complaint and of the commencement of this administrative proceeding, in accordance with paragraph 2(a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 4(c) of the Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

The Panel has independently satisfied itself that the procedural requirements of the Rules and Supplementary Rules have been met. In particular, the Panel has considered whether the Uniform Policy for Domain Name Dispute Resolution adopted by ICANN on October 26, 1999 ("the Policy") is incorporated into the 4.0 Service Agreement between the registrar and the respondent. The complaint set out a provision of that agreement to the effect that the registrant agrees to be bound by the registrarís current domain name dispute policy that is incorporated by reference into the agreement. Exhibit B to the complaint is a printout on May 2, 2000 of the registrarís current dispute resolution policy. It is the Policy. The respondent has not contended otherwise. The Panel is satisfied that the Policy is incorporated into the agreement between the registrar and the respondent.

On June 2, 2000 (within the required time, under paragraph 5(a) of the Rules) the respondentís emailed response was received by the Center. No hard copy response was received. The Center acknowledged receipt of the response on June 6, 2000.

On June 14, 2000 the Center invited Alan L. Limbury to officiate as sole panelist and that day Mr. Limbury accepted the appointment and sent to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Accordingly the panel was properly constituted.

On June 15, 2000 the Center notified the parties of the appointment of the panelist and of the projected decision date of June 28, 2000.

No additional submissions were sought by the panel. No extensions of time were required. The administrative proceeding was conducted in English.

 

4. Factual Background (non-contested facts)

The respondent sells copiers by retail and wholesale. It registered the domain name copystar.com in around June 1996.

The complainants manufacture, promote and sell copiers and related products under the trademark and service mark. COPYSTAR, which KMC first used in commerce in the United States in 1959. KMA runs a division under the name COPYSTAR.

In the United States, KMC is the owner of the trademark COPYSTAR and KMA is the exclusive licensee. The mark has three US registrations, obtained originally under former names of KMC, covering a range of goods and services associated with printing, copying, faxing and computing.

They are:

No. 898,713 (COPYSTAR) of September 15, 1970 (renewed 1990);
No. 1,696,731 (COPYSTAR) of June 23, 1992; and
No. 1,953,937 (COPYSTAR and design) of February 6, 1996.

 

5. Partiesí Contentions

Complainant

(1) The Domain Name is Identical

The domain name copystar.com is identical or confusingly similar to the federally registered trademark and service mark COPYSTAR owned by one of the Complainants and used by both Complainants. See Brookfield Communications, Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1054 n. 7 (9th Cir. 1999), citing Public Serv. Co. v. Nexus Energy Software, Inc., 36 F. Supp. 2d 436 (D. Mass 1999), 1999 U.S. Dist. LEXIS 1994, No. 98-12589 (D. Mass. Feb. 24, 1999)(finding "energy-place.com" and "Energy Place" to be virtually identical); Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, [Ďepix.comí] is the same mark as [ĎEPIXí]"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), affíd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).

(2) The Respondent Has No Rights to COPYSTAR

The Respondent, which does business under the name of Office Land, has no rights to the name and mark COPYSTAR. It owns no trademark registrations which are comprised, in whole or in part, of the mark COPYSTAR, does not do business under a name comprised in whole or in part of the mark COPYSTAR, and is not commonly known by any name which includes the COPYSTAR name or mark.

(3) The Respondent Registered and Is Using the Name in Bad Faith

The complainants filed a complaint with the registrar on November 15, 1996, requesting that the domain name copystar.com be placed on hold. This was done, pursuant to the registrarís then Domain Name Dispute Policy, and the domain name remains on hold pending the outcome of this administrative proceeding.

The Respondentís bad faith in registering and using the domain name copystar.com is evident in a number of ways. First, the respondent owns no trademark registrations which include the mark COPYSTAR, nor does it do business under the name COPYSTAR.

Second, the respondentís copystar.com web page, without authorization from the complainants, prominently featured KMCís mark and logo and, also without the complainantsí authorization, was linked to their Europe page. These actions were clearly calculated to engender confusion among the purchasing public and the trade by falsely indicating that the respondent is associated with or authorized by the complainants, when in fact it is not. Thus the respondent, by using the domain name copystar.com, intentionally attempted to attract Internet users for financial gain, by creating a likelihood of confusion with the complainantsí mark as to the source, sponsorship, affiliation, or endorsement of the respondentís web site, or products or services on the web site.

Third, Mr. John Lee, the contact for the respondent, indicated in a telephone call with Jane Ungaro, Esq. of Amster, Rothstein & Ebenstein, counsel for the complainants, that he would not transfer the domain name copystar.com for less than five or ten thousand dollars. Since this amount far exceeds out-of-pocket costs directly related to the domain name, under World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Administrative Panel Decision, WIPO Arbitration and Mediation Center, Case No. D99-0001, the respondent has used the domain name in bad faith as defined in the Policy, and has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainants for valuable consideration in excess of its out-of-pocket costs directly related to the domain name.

Respondent

The respondent registered the domain name copystar.com around June 1996. It is an ideal name for the respondent (other than officeland.com which someone already had). The respondent spent much time and money to develop and publish the web site, which included the complainantsí logo as a link to the complainantsí web site. The respondent advertised in many yellow pages, magazines, and in other ways, generating many sales to the respondent.

Following complaint from the complainantsí attorneys, the respondent agreed not to "publish" copystar.com for the time being and to delete the complainantsí logo link to the complainantsí web site. Since then the respondent has not used the domain name.

When the complainants sought the domain name, the respondent agreed, provided it was compensated for the thousands of dollars it had spent to develop and publish its web site. The respondent regards this as a reasonable cost. The complainants did not respond and have ignored this offer.

Following receipt from the registrar of a letter saying that the domain name copystar.com is no longer on hold, the respondent received several offers from companies who want that domain name. The respondent found out there are hundreds of companies using the copystar or copy star name in the world. But the respondent waited because KMA was the first company that needed that domain name.

The respondent did not register the domain name in order to sell it for money. The respondent has lost a lot of business "monetary and timely" because it has not been able to use copystar.com. It hopes it can recover those losses by this dispute.

On May 22, 2000 the respondent said it was in the process of transferring the domain name to another company.

 

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) the respondent has no rights or legitimate interests in respect of the domain name; and

(3) the disputed domain name has been registered and is being used in bad faith.

Identity or confusing similarity

The domain name copystar.com is clearly essentially identical to the trade and service marks COPYSTAR owned by KMC and licensed exclusively to KMA in the United States. The addition of the .com top-level domain cannot prevent the inescapable conclusion that, in the market in the United States for the supply of copiers and related products, the name and mark are confusingly similar and the Panel so finds.

The complainants have established this element.

Rights or legitimate interests

The Policy sets out in paragraph 4(c) three circumstances, any of which, if proved, demonstrate the respondentís rights to or legitimate interest in the domain name for the purposes of paragraph 4(a)(ii). These are:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii) youÖ.have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although this paragraph is couched in terms which contemplate the respondent "demonstrating" its rights or legitimate interest, it is for the complainants to establish their absence.

As to circumstance (i), although this complaint was not lodged with the Center until May 2000, the dispute arose in November 1996 when the complainant first complained to the registrar. Before that time, since June 1996, the respondent used the domain name in connection with its web site, which incorporated (without permission) the complainantsí logo as a link to the complainantsí web site. The panel accepts the complainantsí contention that this use of the logo was calculated to engender confusion among the purchasing public and the trade by falsely representing that the respondent was associated with or authorized by the complainants. The panel finds that the use of the domain name was so closely associated with this improper use of the logo that the respondentís use of the domain name in connection with its offering of goods or services was not bona fide.

As to circumstance (ii), the respondent does business in the United States under the name "Office Land". It has no rights in that country to the trade mark COPYSTAR, which belongs to KMC. It does not do business under the name COPYSTAR and is not commonly known by that name.

As to circumstance (iii), the name was put on hold when the complainants complained to the registrar in November 1996. According to the registrar, it remains on hold. The respondent refers to a letter from the registrar saying it is no longer on hold. Be that as it may, the name has not been used since 1996, save that recently the respondent has claimed it is in the process of transferring the name to another party (without explaining how it might accomplish this). It is therefore necessary to consider what use was being made of the domain name when the registrar put it on "hold". For the reasons set out in relation to circumstance (i), the panel finds that use was not a legitimate noncommercial or fair use, and that the respondent did intend, for commercial gain, misleadingly to divert consumers.

The complainants have established this element.

Bad faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith.

The offer in January 1997 to sell the domain name to the complainants for an amount exceeding out-of-pocket expenses does not establish, under paragraph 4(b)(i) of the Policy, a primary purpose, at the time of registration, of selling that name to the complainant. The respondent had used the name commercially (albeit misleadingly) from June 1996 until the registrar put the name on "hold". Once the name was put on "hold", the respondent was unable to use the name for its commercial purposes. Hence its offer to sell was likely prompted by the registrarís intervention.

Paragraph 4(b)(iv) of the Policy provides another example of circumstances which shall be evidence of registration and use in bad faith, namely:-

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating the likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".

For the reasons already given, the panel finds the respondent did act intentionally in this way. Further, it is likely the respondent was fully aware of the complainantsí trade marks when it registered the domain name, since both parties are in the same line of business and the respondent used the complainantsí logo on its web site.

The complainants have established this element.

 

7. Decision

The complainants having established to the satisfaction of the panel all the elements required under paragraph 4(a) of the Policy, the panel requires the registrar to transfer the domain name copystar.com to the complainant Kyocera Mita Corporation, pursuant to paragraph 4(b)(i) of the Policy.

 


 

Alan L Limbury
Presiding Panelist

Dated: June 27, 2000