WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mitsubishi Motors Corporation v. sDns.com
Case No. D2001-1031
1. The Parties
The Complainant is Mitsubishi Motors Corporation of 33-8 Shiba 5-Chome, Minato-ku, Tokyo 108-8410, Japan. The Complainant is represented by Messrs. Birch Stewart Kolasch & Birch, LLP of 8110 Gatehouse Road, Suite 500 East Falls Church, VA 22042, United States of America.
The Respondent is sDns.com of 96-6 Padong Suseonggu, Taegu, 706-070, Republic of Korea.
2. The Domain Name and Registrar
The Domain Name is <mitsubishi-motors.com>.
The Registrar is Domain Direct, Tucows, Inc.
3. Procedural History
The electronic copy of the original Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 23, 2001. The hardcopy of the Complaint was received on August 15, 2001. Therein, the Complainant requested for a single-member Panel. The Center sent an Acknowledgement of Receipt to the Complainant on August 19, 2001.
The Center sent a Request for Registrar Verification to the Registrar on August 21, 2001. The Registrar confirmed the identity of the Respondent on August 28, 2001, and confirmed the language of the registration agreement to be English on August 29, 2001. On August 29, 2001, the Center forwarded the Respondent a copy of the Complaint and the notification of the commencement of this Administrative Proceeding by courier and email and informed the Respondent of the deadline to file a Response, that is, September 18, 2001.
On September 8, 2001, the Respondent wrote to the Center requesting for a translation of the Complaint in Korean. The Center responded to the request on September 10, 2001, explaining paragraph 11(a) of the Rules, which is set down below:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
On the same day, in response to the Centerís reply, the Respondent requested the Centerís confirmation on whether the Respondent had to contact the Complainant directly to negotiate an agreement that this proceeding be conducted in Korean. The Center confirmed on September 11, 2001, that the Respondent should initiate negotiations with the Complainant without the Centerís involvement.
No further communication arose from the Respondent and no Response was received by September 18, 2001. The Center accordingly issued a Notification of Respondent Default on September 19, 2001. On the same day, the Respondent wrote to the Center in reply to the Notification of Respondent Default again requesting that the case proceed in Korean. The Center responded also on the same day, repeating the contents of its earlier communications of September 10, 2001, and September 11, 2001.
No further communication was received from the Respondent thereafter and the Center properly constituted and appointed this Panel in accordance with the Rules and Supplemental Rules. The parties were notified of the appointment on October 9, 2001. No further submissions were received by the Center or this Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision is October 23, 2001.
4. Factual Background
The Complainant has been in the business of manufacturing and selling automobiles, motor trucks and structural parts and accessories since 1970. The Complainant is the exclusive licensee of the trademark MITSUBISHI which is registered for automobiles, ships, freight cars, tank cars, monorail cars, aircraft, bicycles and motorcycles in the United States by the Complainantís licensor, Mitsubishi Heavy Industries, Ltd, under registration no 0,844,427 on February 20, 1968.
The Complainantís products are sold in over 170 countries and the Complainant has used the names MITSUBISHI and MITSUBISHI MOTORS continuously since 1970 in connection with the manufacture and sale of these goods. The Complainantís sales exceeded $16 billion in the year 2000.
The Complainant and its local manufacturing companies and distributors have registered variations of "mitsubishi-motors" domain names, namely:
The Respondent registered the Domain Name on January 24, 2001.
5. Partiesí Contentions
A. The Complainant
The substance of the Complaint is short and is reproduced, in extracted form, below:
"ÖRespondentís registration of the domain name mitsubishi-motors.com is confusingly similar to Complainantís registered trademark MITSUBISHI for, inter alia, automobiles. Specifically, the trademark and domain name share the identical, distinctive word MITSUBISHI, rendering the trademark and domain name confusingly similar in appearance, pronunciation and meaning. Moreover, the trademark MITSUBISHI is a well-known mark by virtue of its lengthy and extensive use in connection with goods such as automobiles. Thus, the Complainantís mark is a strong mark which is entitled to a broad scope of protection. The term MITSUBISHI is also the prominent portion of the Complainantís trade name, MITSUBISHI MOTORS. Furthermore, Respondentís registration of the domain name mitsubishi-motors.com is identical to Complainantís well-known and widely used trade name MITSUBISHI MOTORS. Ö
"Ö [T]he Respondent has no past or present affiliation with the Complainant in relation to the domain name. Nor has Respondent been authorized or licensed by the Complainant to use the Domain Name. In relation to the first element under paragraph 4(c), Complainant asserts that the Respondent has not made demonstrable preparation to use the Domain Name on goods or services. On information and belief, the Respondentís website is passive/dormant and makes no reference to any business activity, which may reasonably be a basis for his rights in the Domain Name. Nor is MITSUBISHI the Respondentís legal name. The Respondent is a natural person and is not commonly known as MITSUBISHI MOTORS. Thus, Complainant asserts that the Respondent cannot have a legitimate claim to the Domain Name because the SLD ĎMITSUBISHI MOTORSí used with the top level domain (the TLD) Ď.comí suggests a commercial enterprise which utilizes the Domain Name for its business activities.
"Finally, with respect to elements of paragraph 4(a) of the Policy, the Complainant asserts that the Domina Name has been registered and used in bad faith. Bad faith, under paragraph 4(b) of the Policy, can be shown through the Respondentís efforts to sell the Domain Name. Complainant alleges that the Respondent herein has attempted to sell its rights in the Domain Name to the Complainant, as demonstrated in the copies of the partiesí electronic mail correspondence attached hereto as Annex 4.
"For all of the foregoing reasons, Complainant alleges that Respondentís registration of the domain name mitsubishi-motors.com will cause confusion with Complainantís mark in that consumers will believe that it derives from Complainant, or is affiliated with or sponsored by Complainant. Moreover, Respondent has no good faith basis for registration of the confusingly similar domain name. Respondent is in no way affiliated with Complainant, nor has it been authorized by Complainant to sue the MITSUBISHI mark. Nor does it appear that Respondent is using the domain name in connection with any active website. Complainantís attempts to access such a website were unsuccessful. Finally, Respondent has offered to sell the domain name to the Complainant. All of these facts demonstrate that the Respondent has acted in bad faith in registering the domain name in issue."
It is useful to reproduce the contents of the correspondence in Annex 4 of the Complaint (including all typographical and grammatical errors).
The email to the Respondentís Administrative Contact (date not provided):
"Mr. Hanjin Ko
"We are writing this letter to ask about Ďmitsubishi-motors.comí.
"My name is Makoto Kachikawa. I am employed as a project manager by MMC-IT-SOLUTIONS(MITS) which serves system business to Mitsubishi-Motors Corporation (MMC) by that corporate comission.
"By the way, I found the Mitsbishi-Motors.com in Domain lists under your administration.
"Now, I have some question for you. I highly appreciate your answer to send me as soon as possible.
"1, Would you provide the mitsubishi-motors.com to MMC or MITS?
(If your answer is yes, go to question 3.)
(If your answer is no, go to question 2.)
"2, Do you have idea for sharing the Ďmitsubishi-motors.comí with us?
(If your answer is ĎYesí, go to question 3.)
(If your answer is ĎNoí, Thatís all question.)
"3, Is it necceary payment for providing or sharing?
MMC IT SOLUTIONS CO. LTD"
The email reply from the Respondentís Administrative Contact dated March 24, 2001:
"Dear Makoto Kachikawa
"We are preparing internet portal services which included shoppingmalls, web hosting, search engines, At present, we are managing legal portal service company in korea.
"Below is another story. About 10 years ago, I was fascinated by mitsubishi GTO. Many people in the whole world very love mitsubishimotors as me. At present, We are preparing online Mitsubishimotors-lovers association. Therefore we registered mitsubishi-motors.com with the goal of using it as a our Mitsubishimotors-lovers association site.
"This will be nonprofit site, But we expect that many mitsubishimotors lovers in the whole world visit this site and get their necessary informations.
"1, Would you provide the mitsubishi-motors.com to MMC or MITS?
----> If MMC or MITS can be used more usefull than ours, we can transfer this domain to them.
"3, Is it necceary payment for providing or sharing?
----> If we give up this information work project of our online mitsubishi-motors-lovers assocation and transfer this domain to MMC or MITS, We think we will have to be properly compensated for giving up our online lovers association.
"I have one question. If we give up this project and transfer this domain to MMC or MITS, How much can they compensate for our online lovers association. If you suggest reasonable condition, We will consider it seriously. Please give me your early answer."
B. The Respondent
The Respondent failed to respond.
6. Discussion and Findings
In order to succeed in this proceeding, Article 4(a) of the Policy requires the Complainant to prove the existence of each of the following elements:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The 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.
As the Respondent failed to respond, despite having been properly notified of the Complaint, the Panel is entitled to draw appropriate inferences pursuant to Rule 14(b). In this case, the Panel accepts the unchallenged assertions of the Complainant as fact, in particular, in relation to:
1. The inactivity of the Domain Name as an address of a website; and
2. The email correspondence in Annex 4 of the Complaint and content thereof.
Identical or Confusingly Similar Trademark
In order to determine whether the Domain Name is identical or similar to a trademark or service mark in which the Complainant has rights, three questions must be answered in the affirmative:
1. Is there a trademark or service mark?
2. Does the Complainant have rights in such trademark or service mark?
3. Is the Domain Name identical or confusingly similar to such trademark or service mark?
A trademark registration is the most obvious answer to the first question. In this case, there is a US trademark registration no 0,844,427 for "MITSUBISHI". The Policy is not restricted to registered trademarks only. A trademark may exist regardless of registration. For example, the Singapore Trademarks Act (Cap 332, 1999 Edition) adopts a definition for "trademark" (or "trademark" as identified therein) in a manner similar to many jurisdictions:
"any visually perceptible sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other persons."
In view of the long and extensive use of the words "MITSUBISHI MOTORS" as a business and product identifier, such use of which has not been refuted by the Respondent, it is a reasonable conclusion that "MITSUBISHI MOTORS" has the capacity to distinguish goods. The Respondentís Administrative Contactís acknowledgements in Annex 4 of the Complaint are testament to the distinguishing capacity of the words "MITSUBISHI MOTORS". Therefore, the answer to the first question is "yes", the trademarks being "MITSUBISHI" and "MITSUBISHI MOTORS".
As a side comment, this Panel does not accept that either "MITSUBISHI" or "MITSUBISHI MOTORS" is a well-known mark in view of the inadequate evidence provided.
The answer to the second question is not so straightforward. The trademark registration for "MITSUBISHI" empowers the Complainantís licensor with rights enforceable against trademark infringers. The Complainant has not provided any evidence on whether the Complainantís trademark license is registered with the United States Patent and Trademark Office and no finding can be made as to whether the Complainant could have rights in the trademark "MITSUBISHI" as a result of such registration. The Complainant no doubt has a contractual right over the trademark "MITSUBISHI" vis-à-vis its licensor. However, having regard to the purpose behind and effect of the Policy, this Panel takes the view that the rights envisaged in paragraph 4(a)(i) must be rights against the world at-large, or at least rights vis-à-vis the Respondent, not merely a contractual right against a third party.
In so far as the words "MITSUBISHI MOTORS" are concerned, it is effectively the name of the Complainant. By virtue of the long use of the Complainantís name as an identifier of its goods since 1970, this Panel is satisfied that the Complainant has acquired some measure of common law rights over the same within the meaning of Article 4(a)(i). In view of this finding, it is not necessary for this Panel to consider whether the Complainant could have rights in the trademark "MITSUBISHI".
It is an established practice to ignore the ".com" portion of domain names when comparing them against corresponding trademarks since it is a non-distinguishing feature. The character "-" is generally also non-distinguishing in nature. On this basis, the third question can be answered in the affirmative, that is, the Domain Name (disregarding the ".com" and "-" portions) is identical to and confusingly similar to the Complainantís name. This Panel does not make any comment on whether the Domain Name is confusingly similar to the trademark "MITSUBISHI".
In conclusion, this Panel finds that the Complainant has established that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Being effectively the Complainantís name, "MITSUBISHI MOTORS" clearly has legitimate rights and interests to use the Domain Name. The Complainant has also shown that the Respondent has not been authorized to use "MITSUBISHI MOTORS". There is no indication that the Respondent has any legitimate rights to use the Domain Name. The Respondent has not provided any justification, including the circumstances set out in paragraph 4(c) of the Policy, which allows the Respondent to claim any right or legitimate interest in respect of the Domain Name.
Although the Complainant has alleged non-use of the Domain Name to support a website, no evidence has been provided (not even at least a printout of a browser error message). Nevertheless, this allegation is unchallenged. As website use is the prevalent use of a domain name as opposed to other uses, the non-use of the Domain Name creates an inference (albeit weak inference in this case) that the Respondent does not have a legitimate right or interest to use the same. Without a Response, the balance appears very slightly tipped in the Complainantís favour and the Panel finds accordingly.
Interestingly, Annex 4 of the Complaint seems to provide a possible explanation (that is, interest) for the Respondentís choice of the Domain Name but this possibility has not been corroborated or elaborated on by the Respondent. Therefore, this Panel is not prepared to find a legitimate interest on this alone.
Bad Faith Registration and Use
Paragraph 4(b)(i) of the Policy provides the following ground for finding bad faith registration and use:
"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."
The Complainant has sought to make out a case of bad faith registration and use on this basis in reliance on Annex 4. It is this Panelís view that Annex 4 does not help the Complainant. The Respondentís Administrative Contactís email is not an offer to sell or transfer the Domain Name. In fact, the suggestion originated from the email of Mr. Kachikawa of MITS, which elicited the reply from the Administrative Contact.
Paragraph 4(b)(i) clearly requires that the purpose behind registering or acquiring the Domain Name was sale, rental or transfer of the Domain Name for a profit. Annex 4 does not indicate such a purpose. All Annex 4 succeeds in showing is that the Respondent does not object to selling the Domain Name, and no more. In the absence of further evidence, it does not satisfy the requirements of Paragraph 4(b)(i) and does not justify a finding of bad faith registration and use.
Non-use of a domain name, especially for an extended period, in conjunction with other circumstantial evidence, can sometimes justify a finding of bad faith registration and use. However, the Domain Name was registered only this year and the Complainant has not proffered any evidence (save for Annex 4 which has been dealt with above) that provides such justification.
There being no further ground of bad faith registration and use raised, and in view of the above findings, this Panel can only find against the Complainant on the issue of bad faith registration and use.
Based on the findings and reasons stated above, and in particular the Complainantís failure to establish bad faith registration and use of the Domain Name, the Panel determines that the Complaint is hereby dismissed.
Soh Kar Liang
Dated: October 22, 2001