WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Isetan v. Stars Web International and Isetan, Inc.

Case No. D2001-0732

 

1. The Parties

The Complainant in this administrative proceeding is Kabushiki Kaisha Isetan (in English: Isetan Company Limited) of 14-1, Shinjuku 3-Chome, Shinjuku-ku, Tokyo 160-0022, Japan, represented by Messrs. Nobuyuki Matsubara, Kiyoshi Muraki and Kenichi Nakayama of Matsubara, Muraki & Associates of Tokyo.

The Respondents are Stars Web International (first Respondent) of 23 Dunearn Close, Singapore 299588 and also c/o Mr. James E P Ong, StarsSurfing International Pte Ltd., 360 Orchard Road #07-10, Singapore 238869 and Isetan, Inc., (second Respondent) of c/o Mr. Eben Ong of Loh Eben Ong & Partners, Advocates & Solicitors, 112 Middle Road #07-00 Singapore 188970, both represented by that firm.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <isetan.com>.

The Registrar is Tucows Inc., of Toronto, Ontario, Canada.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on June 1, 2001, and in hardcopy on June 6, 2001. It named Stars Web International as the only Respondent and stated that the Registrar was Network Solutions, Inc., (NSI). The Complaint was acknowledged on June 8, 2001.

By email on June 5, 2001, and hard copy on June 8, 2001, the Complainant filed an amended Complaint, containing assertions as to events occurring after the Complaint was served on Stars Web International; adding as additional annexes a floppy disc and a videotape and adding assertions and evidence as to other domain names registered by Stars Web International.

On June 8, 2001, the Center sought registration details from NSI. On June 11, 2001, NSI informed the Center that as of June 4, 2001, the Registrar of the disputed domain name was Tucows, Inc. When notified of this by the Center, the Complainant further amended the Complaint by email on June 19, 2001, and in hard copy on June 21, 2001. The Complainant had discovered that the registrant of the disputed domain name had been changed to Isetan Inc., so its amendments added Isetan, Inc. as the second Respondent and amended the name of the Registrar to Tucows, Inc. On June 19, 2001, the Center sought confirmation of registration details from Tucows, Inc. On June 22, 2001, the Registrar confirmed that the disputed domain name is registered in the name of Isetan, Inc. and that its Registration Agreement (which incorporates the Policy) is in effect.

On June 25, 2001, the Center sought an explanation from the Complainant of any connection between Stars Web International and Isetan, Inc., the sole registrant of the disputed domain name. The Complainant responded by way of further amendment of the Complaint by email on June 29, 2001, and in hard copy on July 20, 2001.

On July 23, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. Next day the Center formally dispatched a copy of the Complaint and its various amendments to the Respondents by post/courier (with enclosures) and email (without attachments) with a letter giving notice of the commencement of this administrative proceeding. An additional copy was sent to Stars Web International by facsimile (without attachments). It should be noted that the postal address provided to the Registrar for Isetan Inc. was "Minnesota 55431-3197 US 88888888". The Center sent copies to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was August 13, 2001. On August 9, 2001, the Respondents requested an extension of time within which to file a Response. After consulting the Complainant, the Center extended the time for filing the Response to August 20, 2001. A Response on behalf of both Respondents was filed on August 17, 2001, by email and on August 21, 2001, in hard copy. The Center acknowledged receipt on August 20, 2001. An amendment to the Response was filed on August 21, 2001, by email and on August 23, 2001, in hard copy.

On August 27, 2001, the Complainantís representative foreshadowed its intention to file a Reply; the Respondents objected to the admission of a Reply and the Center notified the parties that it is at the Administrative Panelís sole discretion (once appointed) whether any supplemental filings by either party will be considered in arriving at a decision. An unsolicited Reply was filed by email on August 30, 2001. The panelís decision as to whether or not to admit the Reply appears below. The panel refused to receive any Response to the Reply.

On August 30, 2001, the Center notified the parties of the appointment of Alan L. Limbury to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On that day, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of September 13, 2001.

The language of the proceeding was English.

The Panel is satisfied that the Complaint and its various amendments were filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the amended Complaintís compliance with the formal requirements; the Complaint and its amendments were properly notified to the Respondent in accordance with paragraph 2(a) of the Rules; the Response was filed within the extended time in accordance with the Rules and the panel was properly constituted. The panel allows the amendments to the Response since they were timely and minor, could not prejudice the Complainant and did not delay the proceedings.

 

4. Factual Background (uncontested facts)

The Complainant is the fifth largest department store in Japan, by turnover. According to its Annual Report for the year 2000 it also has stores in Singapore, Malaysia, Thailand, Taiwan and China, representative offices in Paris, New York, Taipei, London and Beijing and other representation in Vienna, Barcelona and Milan.

Its founder, Tanji Kosuge, was known as "Iseya Tanji". In 1886, he founded a draperís shop called "Iseya Tanji Gofuku-Ten". The word "ISETAN" is an invented word, derived from the names of the founder and the shop. Since its incorporation in 1930 the Complainant has used the word "ISETAN" as its trade name and trademark in its conduct of department stores in connection with retail sales of goods such as clothing, foodstuffs and daily necessaries.

The Complainant owns numerous registrations for the mark ISETAN or for a stylized version of the mark "Isetan" in Japan, Singapore, Hong Kong, China, Malaysia and Thailand. In particular, the earliest registration of ISETAN in Japan was in 1941 and in Singapore 1971. The stylized mark was first registered in Japan in 1987 and in Singapore in 1985.

Isetan (Singapore) Ltd., a Singapore subsidiary of the Complainant, has been listed on the Singapore Stock Exchange since 1981. There are 4 stores in Singapore run by the Complainant through its Singapore subsidiary.

The second Respondent Isetan, Inc. (whose address for these proceedings is c/o a Singapore law firm) was incorporated under that name in the State of Delaware, USA on December 29, 1997. The disputed domain name had been registered in the name of the first Respondent Stars Web International (which has a Singapore address) six months earlier on July 2, 1997 "in advance or escrow or otherwise for and on behalf of Isetan, Inc.", according to the Response.

Stars Web International is also the registrant of the inactive domain names <isetan.net>, <takashimaya.net> and <daimaru.net>. Takashimaya and Daimaru are the largest and fourth largest department stores in Japan, with stores also in Singapore.

 

5. Partiesí Contentions

A. Complainant

Identity/confusing similarity

The relevant part of the disputed domain name is "isetan" and is apparently identical with or confusingly similar to various trademarks registered and used by the Complainant.

Legitimacy

The word "ISETAN" is well-known in Japan, Singapore, Malaysia, Thailand, Hong Kong, China and other countries as the Complainantís trade name and trademark. The office of the first Respondent is located very close to the Orchard Store of the Complainant (in Singapore). Thus, it is reasonable to say that the Respondents must know the Complainantís department store and its trademark "ISETAN".

Since it is an invented word and is well-known as the Complainantís trade name and trademark, the word "ISETAN" is not one that traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complainant has never authorized or permitted the Respondents to use the word "isetan" in its domain name.

Stars Web International has not used the disputed domain name in connection with a bona fide offering of goods or services.

At the time of filing the Complaint on June 1, 2001, when the disputed domain name was used to reach the Respondentís website, www.isetan.com, there appeared the "framed" content of the Complainantís website, www.isetan.co.jp. There was no other content. To prove the framing of the Complainantís website, the Complainant submits a video tape recording the above framing. The framing stopped on June 2, 2001, the day after the Complainant sent a copy of the Complaint by facsimile to Stars Web International: at 14.30 that day the website www.isetan.com linked to a website of StarsSurfing International. Between 14.30 and 14.55 an index appeared. At 14.55 a new website appeared with the headline "Exclusively for Members ISETAN, Inc" and the statement in fine print:

"Visitors to ISETAN of Japan, please go to http://www.isetan.co.jp or click here. This is not the registered domain of isetan of Japan. Non-affiliates, please refrain from sending emails to isetan.com. All right reserved. 2001 ISETAN, INC".

Subsequently a website appeared at the site, under the directory "isetanglow", featuring the name ISETAN followed by the words "Internet Shopping Entertainment Technology & Amusement Networks".

Isetan Inc., appears to be related to Stars Web International.

The current contents of the website www.isetan.com owned by Isetan Inc., are substantially the same as they were on June 2, 2001, when the disputed domain name was still owned by Stars Web International.

Accordingly, the Respondents have no rights or legitimate interests in respect of the disputed domain name.

Bad faith

Through use of "framing", Stars Web International is using the disputed domain name to mislead and deceive Internet users accessing the Stars Web International website of www.isetan.com into believing that they are accessing the Complainantís website, www.isetan.co.jp.

The registration by Stars Web International of four domain names incorporating famous marks in the field of department store retailing owned by the Complainant and other established and well-known department stores in Japan having shops in Singapore and other countries than Japan constitutes a pattern of bad faith conduct and demonstrates the Respondentís intent to prevent the Complainant from reflecting the mark ISETAN in corresponding domain names such as the disputed domain name.

As mentioned above, Isetan Inc., appears to be related to Stars Web International.

Accordingly, the disputed domain name was registered and is being used in bad faith by the Respondents.

B. Respondents

Identity/confusing similarity

The assertion that the word "isetan" is a "well-known trade name and trademark" is bare and/or without basis, without proving on a balance of probabilities that it is an internationally well known or famous mark [1], especially in the USA.

The Complainant is purporting to assert that it has rights in a USA TLD www.isetan.com and not a Japanese (.co.jp) or other countriesí CCTLD, where it has registered its trademark.

The Respondents cannot see the relevance that the department store may be famous in Japan or various Asian countries, but may not be famous or well-known elsewhere or internationally, such as in USA or Europe. To prove that " Isetan" is famous or well known internationally, the mark should be internationally recognizable by an audience globally. The Complainant did not state that it has business interest in the USA or is well known there.

It is not explained by the Complainant why it did not register its purported "well known" trademark "isetan" in the USA.

The Complainant makes the irrelevant and/or bare assertion that the first Respondentís office is very close to its Singapore department store, and by that connection or analogy or inference,the first Respondent "must know" the Complainantís purported "well-known" trademark of "isetan". This is speculation. It is important for the purposes of these proceedings that WIPO consider whether "isetan" is a "well known" or famous trademark internationally. Nowhere does the Complainant state as a fact that "isetan" is an internationally well-known or famous trademark or service mark owned by it.

The Complainant merely asserts that it is "well-known as the Complainant ís trade name and trademark" in various Asian countries, excluding USA, Europe, India, Austrialia, New Zealand, North America, Middle East, and Africa. Clearly, an adverse inference must be drawn against the Complainant for its omission, failure and/or neglect to state in no uncertain terms for the purposes of these proceedings that it has intellectual property rights in an internationally well-known or famous trade name or trademark, since it is attempting to "hijack" from its owners (the 2nd Respondent herein) a domain name registered in the USA and belonging to a USA company.

The Complainant submitted that the second Respondent is "related" to StarsSurfing International and Stars Web International, without explaining the relevance and purpose of such assertion. It is important that the Complainant does not divert or distract from the main issue(s). It is not in dispute that the first Respondent, second Respondent and StarsSurfing International are separate and distinct legal entities. Similarly, the Complainant, a Japanese Company, and say, Isetan (Singapore) Ltd are both distinct and separate legal entities.

Since the incorporation of Isetan, Inc., in the USA, the Complainant did not at any material times prior to the commencement of these proceedings complain, claim, challenge and/or assert that the second Respondent has infringed its purported "well-known trade name and trade mark" in USA or elsewhere by the registration of Isetan, Inc in USA. Clearly, the Complainant now seeks to "hijack" a US domain, which was registered for and on behalf of the second Respondent, a US Company bearing the same name as the domain name.

The first Respondent (and its assigns and successors in title) confirms that it registered the disputed domain name (in advance or escrow or otherwise) for and on behalf of the second Respondent, and at all material times prior to its transfer of the same to the second Respondent, held the domain name as trustee (or in escrow) for the second Respondent. As at the commencement date of these proceedings, the beneficial and/or legal ownership of the disputed domain name lies with the second Respondent. All activities relating to the domain name and its website were created and/or designed by the Webmasters at the first Respondent and/or related companies, whether with or without the knowledge of the second Respondent until these proceedings.

Annexed hereto as "Annex B " are earlier versions (screenshots) of the second Respondentís website at www.isetan.com (1998).

Since the commencement of these proceedings, the second Respondent has taken over the creation, designs and other aspects in respect of its website at www.isetan.com, to the exclusion of the first Respondent.

The name of "isetan" was chosen by the second Respondent, for a series or combination of reasons completely detached from and unrelated to the operational concerns of the Complainant, a department chain store of Japan. The name "isetan" represents various acronyms relating to Internet related services, for example, "Internet Services Education Technology Arts Networks" for the purposes of Online Educational and Internet Technological Services.

Whilst the Complainant is essentially a name probably well-known in Japan, the nature of business of the Complainant and that of Respondent is distinctly different, i.e. one is a retail department store in Japan and some Asian countries and the other is a technology company in USA.

Legitimacy

The Complainant again barely asserted that it "has never authorized or permitted the Respondents to use the word Ďisetaní in its domain name". Is there really a need to do so?

As submitted above, the name "isetan" is not a global or international famous or well-known trademark or name, particularly in the USA, where the domain name of www.isetan.com was registered (in escrow or otherwise) for and on behalf of the second Respondent bearing the same name of "Isetan". Surely, it should not be objectionable for a US Company bearing the name of "Isetan, Inc" to register a USA TLD bearing its own name, i.e. "Isetan.com"?

The Complainant did not allege whatsoever in its Complaints that it has registered its purported "well-known trade name and trademark" of "Isetan" in USA, and thereby, it is the legal owner of the trademark of "isetan" in USA. If it now purports to claim such intellectual property right over the name of "isetan", the issue has to be addressed by WIPO is: "Why then did the Complainant not register its purported "well-known trade name and trademark" in the United States of America?"

In recognition that it has no right to the domain name of <isetan.com>, the Complainant apparently through an email dated June 12, 1998 from one Tai Ogata (a Japanese Name) claiming to be a General Manager of Isetan New York Office to the representative hereof by offering to purchase the domain name <isetan.com>.

The fact that the Respondents did not offer to sell the domain name upon being offered (or at any time after the registration in 1997) clearly evidenced that the first and second Respondents are not "cybersquatters" for purposes of selling the domain name for a profit.

The Complainant failed to prove nor allege, adequately or at all, that the Respondents (or any of them) registered or acquired the same primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the purported trademark, or to a competitor of the Complainant, for valuable consideration in excess of respective Respondentsí out-of-pocket costs directly related to the domain name.

Bad faith

The Complainant has falsely and/or wrongly alleged that the first Respondent was using the domain name to mislead and deceive Internet users by using of Internet technology of "framing". The respective Respondents take strong and serious objection to such false and wrongful accusation in the Complaints without any basis whatsoever, and runs contrary to the Video evidence furnished by the Complainant in these proceedings.

In bad faith and/or to distract or divert from the main issues of domain name dispute, the Complainant attempted to link the respective Respondents with other companies (separate legal entities). As this has no relevance or purpose for these proceedings, the Respondents will not respond thereto unless requested to by WIPO.

It is apparent from the Complaints and documentary evidence furnished by the Complainant that it had been covertly monitoring the events occurring at the website of www.isetan.com for the purposes of "bad faith" and to commence these proceedings of "reverse domain name hijacking".

The Respondents have investigated into the matters alleged under this head with the web programmers and designers, and strongly believed that there was no "framing" whatsoever and howsoever of the Complainantís website within Isetan.comís website. The evidence of this wrongful allegation of "framing" as furnished by the Complainant was contained in a Video tape.

By the Complainantís use of the Internet terms of "framing" or "frames" in its Complaint against the Respondents, it has wrongfully misrepresented or mis-stated the facts.

"Framing" or "frames" would mean that the Respondents (or any of them) had intentionally or deliberately "trapped" the Complainantís website at www.isetan.co.jp or any part or any web page thereof within the "frames" of the website of www.isetan.com. This would mean that visitors to www.isetan.com would see the "frames" of Isetan.com but also the website of www.isetan.co.jp or any part thereof or any web page within another frame in www.isetan.com website. By the alleged "framing" technology, visitors to www.isetan.com would see the contents of the Isetan.comís website and also the website of www.isetan.co.jp trapped within the Isetan.comís website.

All that the first Respondent did was to innocently and temporarily redirect some traffic to www.isetan.co.jp, and not by the alleged used of Internet technology of "framing". By such wrongful and false allegations, this Complaint should be dismissed without further consideration, but however, for the sake of completeness and correctness, the Respondents will elaborate on the "redirection".

Due to the heavy traffic that were accessed wrongly by Internet surfers and via emails (with "co.jp" extensions), namely of Japanese origin, in recent months to www.isetan.com [2] the first Respondentís Webmasters innocently redirected internet surfers temporarily for a very short period of time in the year of 2001 to www.isetan.co.jp to save on bandwidth on the first Respondentís servers until the full reconstructed site is complete and ready for the launch of internet and e-business services.

Such heavy unrelated traffic (usually of Japanese origin) to www.isetan.com was caused or contributed directly or indirectly by the Complainant in not stating clearly and prominently at its website of www.isetan.co.jp that it is not related to www.isetan.com (which the Respondents have subsequently done so to clarify to users who accessed www.isetan.com mistakenly).

Since the Complainant was clearly aware of the "redirection" (but chose to allege it as "framing"), it did not at any time complain via email, letters or faxes to the Webmasters and/or the first Respondent if it objected to such temporary redirection of traffic to www.isetan.co.jp. The Webmasters of the first Respondent confirm that had they knew of the objection taken by the Complainant, they would not have done the redirection.

The issue remains as to why did the Complainant fail, omit and/or neglect to complain immediately to the Webmasters of the first Respondent or the first Respondent of the wrongful allegation of "framing", so that the first Respondent could remove such "framing" promptly (if the Complainant so objects), and the first Respondent would also request the Complainant to place a notice (in Japanese and English language) at its Japanese website that it is not related to www.isetan.com so as to divert unnecessary traffic (of Japanese origin) away.

By reason of its behaviour and/or conduct after being aware of the "redirection", the Complainantís sole and dominant purpose of these proceedings was clearly for "reverse domain name hijacking" as it chose to wrongfully accuse the Respondents of using Internet technology of "framing" when the Respondents have not done so at all.

If the Complainantís conduct herein was not for the purpose of reverse domain name hijacking, it would have complained or objected promptly (via whatever means) to the Webmasters of Isetan.com or the first Respondent, and having not received any response thereto to such complaint or objection, then legitimately commence these proceedings. This is not the case. The Complainant made the application herein without first objecting to the "redirection", and then falsely and wrongly alleged in its Complaints that the first Respondent had used "Internet technology called frames".

The Respondents having been made aware of the Complainantís implied objection to the "redirection" (falsely alleged as "framing" by the Complainant) through these proceedings, immediately investigated into the matter and requested its Webmasters to state explicitly on www.isetan.com that:-

"Visitors to Isetan of Japan, please go to http://www.isetan.co.jp or click here. This is not the registered domain of Isetan of Japan. Non-affiliates, please refrain from sending emails to Isetan.com. All rights reserved. 2001 @ ISETAN, Inc."

By stating the above note after receiving the communication for these proceedings, the Respondents (in good faith) were attempting to make it explicitly clear to internet users to www.isetan.com that it is not related whatsoever to the Complainant, and if they have visited the site for the Complainantís, to redirect them to visit the Complainantís site. This redirection and earlier "redirection" were done strictly on the basis of good faith and goodwill, and to redirect unnecessary bandwidth traffic (which most were of Japanese origin) to the Complainantís site.

The Complainant instead of appreciating the increase redirected traffic to its website, falsely and wrongly alleged that the Respondents have "framed" the Complainantís website.

Apparently, the Complainant had not only not corrected but had either allowed traffic to be directed to isetan.com or it could be a deliberate act, as the number of emails received were mainly from senders of "co.jp" emails. This is not only an inconsiderate act but also an irresponsible Internet practice based on bad faith on its part. It follows that there is a possibility that this might have been a deliberate attempt to (reverse) hijack the domain name of Isetan.com.

Visitors to the Complainantís site are primarily of Japanese origin, as its website is primarily in the Japanese language.

Apart from the false and wrongful allegation of "framing" against the Respondents (which the Respondents takes a strong objection thereto), the Complainant has no other credible evidence of other purported conduct of bad faith on the part of the Respondent, such as the Respondentís act in explicitly stating that it is related to the Complainant or its website.

The Complainant has operated for a number of years its Japanese website at www.isetan.co.jp primarily for the Japanese market since its contents are primarily in the Japanese language. A search conducted at www.japanregistry.com evidence that the Complainant has registered its domain of www.isetan.co.jp since March 15 1996. It is not at all clear what is its motive or purpose in claiming its purported rights in Isetan.com, a USAís TLD and USA being an English language based country, when it has its domain name of www.isetan.co.jp and also www.isetan.jp. So, having had the 2 Japaneseís TLDs, it is not clear why it is purporting to assert rights to a USAís TLD when it apparently has no business presence or trademark in USA.

Alleged Ownership of <takashimay.net> [sic] and <daimaru.net>

It is clear that takashimay.net [sic] and daimaru.net have no relation and/or connection at all to the second Respondent, which only owns the domain name of <isetan.com>. It is the Respondentsí contention that the Complainant had erroneously linked these domains together and apparently assumed that these domain names must have a common relationship. The first Respondent is a Technology and Internet firm and frequently registers domain names of various origins for and on behalf of its clients.

Further, it is not proper for the Complainant to repeatedly speculate on matters or issues, which they are not privy thereto, or delve on irrelevant matters, hoping to distract or divert from the main issues. For instance, if Takashimaya Co., Ltd, Japan wishes to dispute any domain name, it is entirely at their discretion to do so, and not for the Complainant to falsely and/or wrongly misrepresent these issues and/or facts not privy to them in these proceedings (speculative). By such conduct, it again shows that the Complainant is acting with bad faith in these proceedings by linking irrelevant matters or facts.

Usage of Isetan.com in Connection With an Offering of Goods or Services

It is also not true that the second Respondent has no use of the domain name of <isetan.com> as speculated by the Complainant since the Web site has been up for a number of times with internal folders being used by its members and clients. The website at <isetan.com> are located behind a password protected directories for members only, and Isetan.com acts as an online representation of the second Respondent, with the main bulk of technology and internet business activities targeted towards global and US markets.

Legitimate Non-Commercial and Fair Use of <isetan.com>


As demonstrated above, due to the great differences in the businesses, the second Respondent does not want nor need to be affiliated or linked with the Complainant whatsoever or howsoever.

It is not shown by the Complainant that the Complainant and the Respondents are competitors and/or the domain name was registered by the first Respondent primarily to disrupt Complainantís business.

There has also never been any trademark issues as "Isetan" is not a famous or well-known international trademark nor has it got any significant presence (if any) in the USA for which the dotcom (.com) domains are primarily for USA. It is also important to note that country top level domain names come with extensions like .co.jp, .co.uk .com.sg, .de, .to, etc. Therefore it has never occurred to the registrants and/or the Webmasters of the domain name that there is any problem registering the <isetan.com> as a domain name. Moreover, isetan.com is the name of the second Respondent.

The Respondents have shown good faith towards the Complainant, as evidenced by the notices placed on the site stating specifically that "Isetan.com is the official Web site of Isetan, Inc., and for those visiting Isetan Co., Ltd of Japan, please visit isetan.co.jp.". This notice, along with the re-direction of emails shows that the Respondents do not have the intent to mislead or divert consumers.

Incidentally, the Complainant could easily resolve the problem of domain name confusion (which is self-inflicted) if it states prominently at its website that its domain www.isetan.co.jp. This would reduce substantially the unwanted or wasteful bandwidth taken up at Isetan.comís server from the Complainantís Japanese users. This is commonly practiced by Webmasters who wish to keep their users constantly aware of their actual domain name. By its omission or failure to do so, the Complainant had intentionally or unintentionally directed traffic to Isetan.com.

Bad Faith shown by Isetan Co. Ltd, Japan

The Complainant has not only wrongly accused the Respondents (eg. "framing") but also wrongly implicated StarsSurfing International and its associates. StarsSurfing International together with its associates will take the necessary actions to protect its own interests and counter-complain or sue the Complainant for unnecessary distress, loss of face and unnecessary loss of time and resources for the all the inconvenience caused.

This is a case for intended and specific hijacking of a domain that does not belong to the Complainant. The Webmasters at isetan.com is therefore puzzled as to the uncorrected source of traffic, and the Complainantís wrongful, unsubstantiated, speculative, false and/or misleading allegations or accusations against the Respondents and others for these proceedings and thereby evidenced an attempt to hijack the domain name strictly for its own use, benefit and/or profits, to the exclusion of its legal and beneficial owner of the domain name.

Conclusion

For the Complainant to succeed, it has to prove all the three (3) elements (including the ingredient of "bad faith" on the part of the Respondents), and it is submitted that it has failed to do so and this Complaint should be dismissed.

As submitted above, the Complainant misled or attempted to mislead WIPO by its wrongful and false allegation that the first Respondent had used "framing" technology to purportedly substantiate its allegation of "bad faith" against the Respondents (or any of them).

This is also a classic case of an attempt at "reverse domain name hijacking", a recent phenomenal in domain names disputes, whereby a Japanese Complainant, not having a trademark or trade name in USA (registered or otherwise), purports to claim intellectual property right on a domain name (".com") registered in the USA bearing the same name as the second Respondent (a company incorporated in USA).

For the reasons aforesaid in this Response, it is humbly submitted that the domain name of isetan.com is registered and used legitimately, in good faith by the Respondents, and accordingly, there should not be a transfer of domain name ownership, as purported by the Complainant.

C. Reply

For the reasons given in Viz Communications Inc., v. Redsun dba www.animerica.com and David Penava (WIPO Case D2000-0905), this Panel does not admit the unsolicited Reply because it canvasses topics which the Complainant had already addressed in its Complaint, as amended.

 

6. Discussion and Findings

Procedural issues

In British Broadcasting Corporation v. Data Art Corporation / Stoneybrook (WIPO Case D2000-0683) the panel decided that a change in registrant of a disputed domain name after notice to the Respondent of the Complaint but before formal commencement did not affect the proceedings:

"The NSI Service Agreement binds the respondent to the provisions of the Policy. In particular, under section 8(a) of the Policy, the domain name holder is bound not to transfer the domain name registration to another holder during a pending administrative proceeding.

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To interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and the Rules. Moreover such an interpretation would appear to permit, if not encourage the phenomenon cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding."

Here the first Respondent registered the disputed domain name for and on behalf of the second Respondent, to whom that name was transferred after notice to the first Respondent of the Complaint and in breach of section 8(a) of the Policy. At all

material times prior to the transfer of the disputed domain name to the second Respondent, the first Respondent held the disputed domain name "as trustee (or in escrow) for" the second Respondent and all activities relating to the disputed domain name and its website were created and/or designed by the Webmasters at the first Respondent and/or related companies "whether with or without the knowledge of the second Respondent until these proceedings".

Accordingly both Respondents are proper parties to this proceeding.

The question arises whether justice to complainants who have initiated complaints in accordance with the Policy and the Rules requires that relief may be granted if the Complainant establishes its entitlement to relief against the registrant of the disputed domain name at the time the Complaint was filed or whether a complainant must establish its entitlement to relief against the new registrant, to whom the disputed domain name was transferred in breach of paragraph 8(a) of the Policy, after the filing of the Complaint. Another aspect of the same question is whether justice to registrants requires that relief be denied to a complainant where a registrant having a legitimate interest in a disputed domain name and/or not acting in bad faith innocently acquired the registration in an arms length transaction without notice of the breach of paragraph 8(a) of the Policy.

As appears below, the relationship between the Respondents in this case does not require a resolution of these questions.

The change in Registrar does not affect this proceeding. The present Registrar is holding the disputed domain name pending the outcome of the proceeding and (subject to any court proceedings that may be commenced following this decision under paragraph 4(i) of the Policy) is bound by any direction to cancel or transfer the disputed domain name that this panel might make.

Substantive issues

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

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

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

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

It is not necessary for a Complainant to establish that its mark is internationally well-known or famous (although actual or constructive prior knowledge of a Complainantís mark by a domain name registrant may lead to adverse findings on the issues of legitimacy and bad faith).

The .com gTLD is not restricted to residents of the USA. Nor is it necessary for a complainant to show that it has trademark rights in that country in order to succeed in a complaint about a .com domain name.

Identity or confusing similarity

Essential or virtual identity is sufficient for the purposes of the Policy [3]. The panel finds the disputed domain name is identical to the Complainantís trademark ISETAN.

The Complainant has established this element.

Illegitimacy

The Complainant bears the onus of proof on this, as on all issues.

The Complainantís trademark is an invented word and is inherently distinctive. It was in use long before the disputed domain name was registered. The Complainant has not authorized the Respondents to use its trademark nor to register the disputed domain name. This is prima facie evidence that the Respondents have no rights to or legitimate interests in the disputed domain name.

The Respondents both have Singapore addresses. The Complainant has four stores and registered trademarks in Singapore. It is irrelevant that the Complainantís reputation in the USA may not be as great as in Asia. The panel is satisfied that, at the time of registration by the 1st Respondent of the disputed domain name, the trademark ISETAN was known in Singapore in connection with the Complainantís retail stores.

The panel concludes from this circumstance that it is likely the first Respondent was aware of the ISETAN mark when it registered the disputed domain name. This conclusion is supported by the fact that the first Respondent has registered other domain names incorporating the trademarks of two other Japan-based department stores having shops in Singapore and must therefore be taken to be knowledgeable as to the identity of such department stores. Despite its submission that it frequently registers domain names on behalf of its clients, the first Respondent does not assert that it registered the domain names <takashimaya.com> and <daimaru.com> on behalf of Takashimaya and Daimaru. Its further submission that Takashimaya Co., Ltd may dispute the registration of any domain name at its discretion appears to contradict the suggestion that the first Respondent acted on behalf of that company.

Despite its lengthy Response, the first Respondent has not demonstrated any of the circumstances enumerated in paragraph 4(c) of the Policy. It was not and is not known by the disputed domain name. It has provided "screenshots" dated "1998 © ISETAN, INC." of a website at <www.isetan.com> showing a version of the Skye boat song which includes the lines:

"Carry the lad thatís born to be king of domains
Over the sea to Skye"

but there is no explanation of the nature of any activity in relation to which the domain name might thus have been used and no evidence that any such use was in connection

with an offering of goods or services, let alone a bona fide offering. Likewise there is no evidence of noncommercial or fair use.

So far as the second Respondent is concerned, it is true that its corporate name is the same as the disputed domain name. But to demonstrate legitimacy, paragraph 4(c)(ii) requires that:

"You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights".

The use of the past tense indicates that it is necessary to show that the registrant was commonly known by the disputed domain name before the disputed domain name was registered. Here the second Respondent was not incorporated, and hence not known by the disputed domain name, until after that domain name had been registered. Accordingly the correspondence between the corporate and domain names does not avail the second Respondent.

Under all the circumstances the panel is satisfied that neither Respondent has ever had any right to or interest in the disputed domain name. The Complainant has discharged its burden of establishing this element.

Bad faith registration and use

A finding of bad faith may be made where a respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name [4], the circumstances set out in paragraph 4(b) of the Policy not being exhaustive. The panel has found it likely the first Respondent knew of the mark ISETAN when it registered the disputed domain name for and on behalf of the as yet unincorporated second Respondent.

Further, the first Respondent also registered the names of two other well-known Japan-based department stores having shops in Singapore. The panel concludes that the first Respondent registered the disputed domain name for and on behalf of the second Respondent in order to prevent the Complainant from registering its ISETAN mark in a corresponding .com domain name and that it has engaged in a pattern of such conduct. Under paragraph 4(b)(ii) of the Policy, this is evidence of both bad faith registration and use.

The videotape provided by the Complainant clearly shows that, shortly before the Complaint was filed, the first Respondent had so arranged the website www.isetan.com as to display the then current content of the Complainantís website www.isetan.co.jp, (notably including a prominent depiction of the Complainantís stylized registered trademark ISETAN and the name of the Complainant). Whether or not this conduct constitutes "framing", to which term the Respondents have made vigorous objection, it would have misled Internet users into the erroneous belief that the first Respondentís website was that of the Complainant.

This is clear evidence of bad faith use which the Respondentsí submission about innocently redirecting unwanted traffic does nothing to dispel.

The submission that ISETAN represents various acronyms, "for example Internet Services Education Technology Arts Network" cannot be accepted. The expression actually used was Internet Shopping Entertainment Technology & Amusement Networks (Annex 9-1 to the Complaint). This was used for the first time by the first Respondent after the Complaint was filed and remained in use after the transfer of the disputed domain name to the second Respondent. It thus appears to be an afterthought designed to manufacture a defence to the Complaint, a view reinforced by the discrepancy between the expression actually used and that put forward in the Response.

Likewise the transfer of the registration to the second Respondent appears to be an attempt to take advantage of the second Respondentís corporate name for the same purpose. The panel concludes that the second Respondent accepted the transfer with knowledge of the Complaint and for the purpose of seeking to take advantage, in defending the proceedings, of its corporate name. Under these circumstances registration by the second Respondent was in bad faith.

The panel finds that the relationship between the Respondents was such that the use made by the first Respondent of the disputed domain name was use made on behalf of the second Respondent and that, accordingly, the display of the Complainantís website in the manner evidenced by the videotape constitutes bad faith use by the second Respondent, as well as by the first Respondent.

Accordingly the Panel finds that the Complainant has established that the disputed domain name was registered and is being used in bad faith.

Reverse domain name hijacking

Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). To prevail on such a claim, Respondent must show that Complainant knew of Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith [5]. Since the Complainant has shown that it is entitled to relief, the claim for reverse domain name hijacking fails.

 

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <isetan.com> be transferred to the Complainant.

 


 

Alan L. Limbury
Sole Panelist

Dated: September 5, 2001

 


Footnotes:

1. WIPOís Standing Committee on the Law of Trademarks, Industrial Design and Geographical Indications (the WIPO SCT) adopted a list of factors as the recommended non-exhaustive criteria to be considered in determining whether a mark is well known.

2. The website of isetan.co.jp was hosted with other websites at a server, and heavy traffic also caused slowdown in internet access to the other websites.

3. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102).

4. See SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF Case No. FA0094956). Likewise Marriott International, Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc. v. Sandro Ursino (DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF Case No. FA0095037).

5. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., (WIPO Case No. D2000-1224) and Goldline International, Inc. v. Gold Line (WIPO case No. D2000-1151).