WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Daihatsu Motor Co Ltd v. White TV

Case No. D2001-0739

 

1. The Parties

1.1 The Complainant is Daihatsu Motor Company, Limited, a Japanese corporation with its principal place of business in Osaka, Japan.

1.2 The Respondent is White TV, purporting to be an American corporation with its principal place of business in California.

 

2. The Domain Names and Registrar

2.1 The domain name upon which this complaint is based is <daihatsu.com>. The registrar of the domain name as at the date of the Complaint is Tucows Inc.

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on June 2, 2001, and in hard copy on June 8, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant.

3.3 The Center sent the Complainant an Acknowledgment of Receipt of Complaint on June 7, 2001, by email.

3.4 The Center sent Tucows Inc. a Request for Registrar Verification on June 12, 2001, by email. Tucows Inc. responded on June 14, 2001 verifying:

(a) A copy of complaint had been received by the registrar;

(b) Tucows Inc. was the registrar for the domain name in dispute;

(c) The respondent was the current registrant of the domain names in dispute;

(d) The domain name;

(e) The Respondentís contact details;

(f) That the UDRP applies to the domain name and;

(g) That the domain name is on hold within the system.

3.5 The Center sent a Notification of Complaint and Commencement of Administrative Proceeding on June 19, 2001, to the Respondent by Federal Express courier. The documentation supplied to the Panel, together with the Federal Express tracking site, reveals that the two packages were returned to the Center due to being incorrectly addressed. However, the addresses were the addresses specified in the Whois database and, in accordance with Rule 2(a)(i), the attempt is sufficient to discharge the Providerís responsibility. Similarly, the attempts made by email are not accompanied by any evidence of receipt, but the requirements of paragraph 2(a)(ii) of the Rules have been met.

3.6 No response was filed.

3.7 The Center sent the parties a Notification of Respondent Default on July 10, 2001, by email. A copy of this has been furnished to the panel.

3.8 In cases where no response has been filed, the Panel is particularly concerned to ensure that the requirement of paragraph 10(b) of the Rules, that the parties are treated with equality and that each party is given a fair opportunity to present its case, is fulfilled. Considering the actions undertaken by the Provider, the Panel is of the view that in the present case, if the Respondent has not received actual notice of the proceedings, it is attributable solely to the Respondentís contact particulars in the Whois database being erroneous. Neither the Complainant nor the Provider could take any alternative action.

3.9 The Center sent the parties a Notification of Appointment of Administrative Panel and Projected Decision Date by email on July 27, 2001.

3.10 All other administrative requirements appear to have been met.

 

4. Factual Background

The following facts are asserted in the Complaint and remain uncontested:

4.1 Activities of the Complainant

Since 1907 the Complainant has manufactured, distributed and sold internal combustion engines. Since 1930 it has engaged in the manufacture, distribution and sale of automobiles and other motorized vehicles and related parts. The Complainant became known as Daihatsu Motor Company, Limited (DMC), in 1951. DMC has marketed around the world since the early 1960s. DMC markets in more than 140 countries including Asia. Europe, South America and Latin America. In the year 2000, more than 750,000 automobiles and 40,000 engines were sold in those markets. Until 1996, DMC also distributed and marketed certain vehicles in North America through its subsidiary Daihatsu America, Inc. It continues to provide spare parts and services for vehicles in North America.

4.2 The Complainantís Trade Marks

DMC has more than 150 registrations of the trademark ĎDaihatsuí in more than 100 countries. They have been used in commerce since the 1930ís and registered in the US since 1960. Included are two United States trade mark registrations for the word Daihatsu in stylised form, details of which were contained in Annexure E of the complaint. One registration is for vehicles including automobiles, trucks, scooters, motorcycles, bicycles, wagons, tricycle cars, side cars and parts thereof and the other is for internal combustion engines, steam engines and certain other machinery.

The Complainant asserts that the Marks are distinctive, actively promoted and well-known. They are thus a valuable asset symbolizing DMC, its quality products and goodwill.

4.3 Activities of the Respondent

There is no information available regarding the Respondent. The Complainant asserts that

"there are no corporate records on file with the California Secretary of State concerning any company by the name of White TV. Accordingly, it is not possible to determine the corporate status or additional contact information of the Respondent".

4.4 The Complainantís Contentions in the Complaint

The Complainant addresses each element of Paragraph 4(a) of the Policy.

In relation to Paragraph 4(a)(ii) of the Policy:

"To DMCís knowledge Respondent does not possess any registered trademarks concerning the Marks and has never used the Marks in connection with any goods or services of the Respondent. DMC has not licensed or otherwise permitted Respondent to use the Marks, nor has it licenced or otherwise permitted the Respondent to apply for or use any domain name incorporating any of the Marks."

In relation to Paragraph 4(a)(i) and (iii) of the Policy:

"Respondent manifested its bad faith by registering a domain name, DAIHATSU.COM, that is identical or confusingly similar to DMCís Marks with intent to sell it at a profit. According to the Whois database, Respondent registered the domain name on September 14, 1997-several decades after DMCís first use and registration of the Marks. Moreover, DMCís products and Marks are well-known throughout the world. Accordingly, Respondent had constructive knowledge (at a minimum) of the Marks at the time it registered DAIHATSU.COM."

The Complainant believes the domain name is being used in bad faith on the basis of Paragraph 4(b)(i) of the policy.

Further in support of Paragraph 4(a)(iii):

"Respondent has further demonstrated its bad faith by not using the DAIHATSU.COM domain name in connection with an active Internet site, despite having registered the domain name more than three years ago".

"Respondent has also demonstrated its bad faith by providing false contact information to its domain name registrar Tucows.comÖSimilarly, there is only one phone number and one address listed on the Whois database. A message at the phone number refers callers to a Web site at www. DomainMart.com, which is a service that specialises in the registration and sale of domain names."

"Respondent further manifested bad faith in that the Register.com banner at WWW. DAIHATSU.COM enables Internet users to bid on the DAIHATSU.COM domain name. "

The Complainant also submits that:

"ÖBy registering the domain name DAIHATSU.COM, Respondent has intentionally prevented DMC from benefiting from its own marks.

 

5. Discussion and Panel Findings

This section is structured by reference to the elements required by paragraph 4(a) of the Policy.

5.1 Domain Name identical to or confusingly similar to Complainantís Marks

The domain name in dispute is <daihatsu.com>. The Mark owned by the Complainant is "daihatsu". The domain name in dispute is thus identical to the Complainantís Mark as the gTLD suffix serves no relevant distinguishing purpose.

Accordingly, the Complainant has made out the ground in paragraph 4(a)(i) of the Policy.

5.2 The Respondent has no rights or legitimate interest in the domain name

There is no evidence or suggestion that the Respondent has any right or interest in the domain name in dispute; the Panel cannot conceive of any right or interest that the Respondent might have in the Mark, and is satisfied that the Respondent has no right or legitimate interest in the domain name.

Accordingly, the Complainant has made out the ground in paragraph 4(a)(ii) of the Policy

5.3 The Domain Names have been registered and are being used in bad faith

The contact details in the WHOIS database ostensibly consist of one phone number, two street addresses and one email. It is clear to this Panel that the addresses given, although corrupted by the omission of the second line in the case of the Administrative, Billing and Technical contacts, are intended to be all the same, namely, 564 Mission Street, B118, San Francisco, 94105-2918, USA. Consistently with the allegation made in paragraph 21 of the Complaint, DomainMart.com has an address at 564 Mission Street, San Francisco. And the telephone number given on DomainMartís website (1 415 905 4234) is the same as the sole telephone number provided by the Respondent in its Whois contact details. The Complainantís evidence is to the effect that the person answering the telephone at that number denied all knowledge of the Respondent.

Absent any explanation for the Respondentís registration of the domain name in dispute, and in the face of the Complainantís overwhelming reputation in the Mark, the Panel has little difficulty in inferring from the foregoing evidence including the erroneous contact details that the Respondentís registration and continued use of the domain name in dispute was and is in bad faith. For the purposes of this finding, and consistently with this Panelís numerous prior decisions in such cases, the registration of a domain name is sufficient "use" of the DNS to prevent another person from registering that domain name and resolution to an active site is not necessary. In this case, however, the domain name in fact resolves to Register.comís website and entry of the domain name in the enquiry panel at that site results in an invitation to bid for the purchase of the domain name. In this Panelís view the registration of a domain name solely for the purpose of resale is not a bona fide registration of a domain name.

Accordingly, the Complainant has made out the ground in paragraph 4(a)(iii) of the Policy.

 

6. Decision

The Domain Name <daihatsu.com> is to be transferred to DMC as the Complainant has proved all the requirements of paragraph 4(a) of the Policy. The Panel upholds the Complaint.

 


 

Philip N. Argy
Sole Panelist

Dated: August 17, 2001