WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

JCB CO., Ltd. v. MarchClub studio

Case No. D2001-1396

 

1. The Parties

1.1 The Complainant is JCB CO., Ltd. of 1-6 Kanda Surugadai, Chiyoda-Ku, Tokyo 101-8006, Japan.

1.2 The Respondent is MarchClub studio of 8f-2 No 152, Sec 1, Chung-Hsiao E.rd, Taipei, Taiwan 100, Province of China.

 

2. The Domain Name and Registrar

2.1 The domain name upon which this Complaint is based is <jcbcard.com> (the "Disputed Domain Name"). The registrar of the Disputed Domain Name as at the date of the Complaint is TUCOWS Inc. ("TUCOWS").

 

3. Procedural History

3.1 The Disputed Domain Name was registered on December 13, 1996. The Panel queried whether the Uniform Domain Name Dispute Resolution Policy applied. TUCOWS advised the Center that the Policy applied to the Disputed Domain Name. The Panel assumes this is on the basis that the registration agreement between the Respondent and TUCOWS includes a provision that TUCOWS may modify that agreement at any time, and that it has done so to incorporate the Policy since the date of registration of the Disputed Domain Name. The Panel has not seen a copy of the Respondentís registration agreement and has therefore proceeded on the basis of TUCOWSís report that the Policy applies. Were it not for that fact, the Complaint would have been dismissed as incompetent.

3.2 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").

3.3 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on November 26, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant.

3.4 On November 29, 2001, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.

3.5 The Center sent a Request for Registrar Verification to TUCOWS on November 30, 2001, by email. TUCOWS responded to the Centerís request by email on November 30, 2001, by email, stating:

(a) that TUCOWS had received a copy of the Complaint from the Complainant;

(b) that TUCOWS was the registrar for the Disputed Domain Name;

(c) that the Respondent was the current registrant of the Disputed Domain Name;

(d) that the Disputed Domain Name <jcbcard.com> was active;

(e) the Respondentsí contact details; and

(f) that the Uniform Domain Name Dispute Resolution Policy applies to the Disputed Domain Name.

3.6 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on December 7, 2001, to the Respondent by post/courier (with enclosures) and by email (without attachments), and to the Complainant by email (without attachments).

3.7 The Respondent failed to file a Response in the time allowed and has not filed a Response to date as far as the Panel is aware.

3.8 A notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative by email on January 3, 2002. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute.

3.9 The Center sent a Transmission of Case File to the Administrative Panel by email on January 14, 2002. The documentation was received in hard copy by the Panel on January 18, 2002 in Sydney, Australia.

3.10 All other procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant

The following information is asserted as fact in the Complaint and remains uncontested.

The Complainant is a company established and existing in Japan under Japanese law. The Complainant provides various services including financial and credit card services, travel agency services, and commercial information services. "JCB card" is an international credit card service provided by the Complainant in 167 countries and territories worldwide. As at November 8, 2001, JCB cards were accepted at 7.96 million merchants and there were 38.08 million JCB card members in 18 countries and territories worldwide. The Complainant has annexed a copy of its website at <jcbinternational.com> which sets out this information. The registered trademark "JCB" has also been used for magnetic coated cards, integrated circuit cards, and credit card related computer services.

4.2 The Complainantís trade marks

The following information is asserted as fact in the Complaint and remains uncontested.

The Complainant states that it is the owner of registrations for the trademarks and service marks "JCB" and "JCB CARD" in over 100 countries and territories including Taiwan, Japan, Canada, and the U.S.A.

The Complainant has annexed copies of registration certificates for Japan and Taiwan. However, the Complainant has not provided an English translation of the documents annexed to the Complaint and the Panel has relied on the evidence in the Complaint to interpret the documents. Where the language of an administrative proceeding is English, the Complainant should provide an English language translation of any document that the Panel is asked to rely upon.

The Complainant states that it has registered "JCB" as a service mark in the United States. The Complainant has annexed a copy of the results of a search for "JCB" on the U.S. Trademark Electronic Search System which shows the service mark "JCB" as being registered to the Complainant since April 21, 1981, in respect of "Financial and Financially Related Services, Namely Credit Card Services, Travellers Check Services and Financial Services for Travellers - namely, Foreign Remittance Services".

The Complainant states that it has registered "JCB" as a service mark in Canada. The Complainant has annexed a copy of the results of a search for "JCB" on the Canadian Intellectual Property Office website which shows the service mark "JCB" as being registered to the Complainant from September 3, 1982, in respect of "Credit card services, travel agency services, advertising agency services, investigation services respecting credit standing, and financial advisory services".

4.3 Activities of the Respondent

As stated above, no Response to the Complaint has been filed.

No information as to the activities of the Respondent is asserted in the Complaint.

 

5. The Complainantís contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the Disputed Domain Name is confusingly similar to the Complainantís service mark "JCB CARD" as the two are identical. The Complaint further asserts that the Disputed Domain Name, which the Respondent has registered, is confusingly similar to the Complainantís trade mark and service mark "JCB" as they differ only in the addition of the word "card" which is descriptive of a service offered by the Complainant.

5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent should be considered as having no legitimate interest in respect of the Disputed Domain Name because as at the date of the Complaint:

(a) the Respondent has no legitimate right to use the Complainantís trademarks or service marks; and

(b) the Respondent has no legal or financial relationship with the Complainant.

5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered the Disputed Domain Name in bad faith because the Respondent has acquired the Disputed Domain Name for the primary purpose of selling it to the Complainant or a competitor of the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name.

In support of this assertion, the Complaint states that the Respondent has offered the Disputed Domain Name for sale through the Internet site <GreatDomains.com> for the price of $14,999. The Complaint annexes a copy of the relevant page of the GreatDomains.com website as at November 8, 2001, to evidence this. The page describes the Disputed Domain Name as "Like VISA & Master card, JCB Card is the *MAJOR* credit card in Japan." The site also asks users of the site to "Make Offer (U.S. Dollars)$" and provides an electronic process so that users can do so online.

 

6. Discussion and Panel Findings

6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. As noted above, the Respondent has failed to file a Response to the Complaint within the time limits allowed and, as far as the Panel is aware, has not filed a Response at all. Accordingly, all assertions in the Complaint are uncontested and, under paragraph 5(e) of the Rules, the Panel is required to decide the dispute based upon the Complaint alone. Notwithstanding this rule, in order to be successful, the Complainant still bears the burden of proving, on the balance of probabilities, that all three elements are present, and this Panel reserves the right to rely upon paragraph 10 of the Rules to avail itself of such publicly available material as it deems appropriate to corroborate or substantiate any assertions made in the Complaint and Response (if any). There has been no need to do so in this particular case.

6.2 Domain Name identical or confusingly similar to Complainantís trade mark

The Disputed Domain Name is <jcbcard.com>. The Complainant provides an international credit card service known as "JCB card" and owns various registrations for the service mark "JCB CARD". The Disputed Domain Name, <jcbcard.com>, is identical to this service mark. In addition, the Disputed Domain Name combines the name of the Complainant with a common noun which is descriptive of a service provided by the Complainant around the world. The Panelís view is that where, as here, the common noun selected coincides with the services in respect of which the other element of the domain name is registered as a service mark, confusing similarity is inevitable.

The Panel is satisfied that the Disputed Domain Name is confusingly similar if not identical to trademarks and service marks in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(i) of the Policy.

6.3 The Respondent has no rights or legitimate interests in the Domain Name

The Complainant asserts that the Respondent has no legitimate rights or interests in the Disputed Domain Name.

Paragraph 4(c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the domain name. The Panel has seen no evidence to support an inference that any of these circumstances exist. The mere act of registering a domain name does not grant the registrant a legitimate interest in that domain name.

The Respondent has provided no evidence that it has entered into licensing arrangements with the Complainant to use the words "JCB" or "JCB CARD" or derivatives of them.

Without evidence to the contrary, the Panel cannot presently conceive of any legally sound basis upon which an assertion that the Respondent has a right or legitimate interest in the Disputed Domain Name might be made.

The Panel finds that the Respondent has not demonstrated that paragraph 4(c) applies and that the Complainant has discharged its onus in proving on the balance of probabilities that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Accordingly, the Complainant has made out paragraph 4(a)(ii) of the Policy.

6.4 Domain Name has been registered and is being used in bad faith

In order to show bad faith registration by the Respondent, the Complainant asserts that the Disputed Domain Name was registered for the primary purpose of selling it to the Complainant who is the owner of the registered trademarks and service marks "JCB" and "JCB CARD" or a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name. The Respondent has provided no evidence that it has acted in good faith in registering the Disputed Domain Name.

The Panel finds that, prior to any notice of this dispute, registration of the Disputed Domain Name by the Respondent was primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name. This finding is based upon evidence that:

(a) the Complainantís operation of JCB card as a credit card service, and their registration of "JCB" and "JCB CARD" as service marks predates registration of the Disputed Domain Name and the credit card service operated by the Complainant and known as JCB card is a large scale worldwide business that the Respondent was likely to be aware of at the time of registration of the Disputed Domain Name;

(b) the description of the Disputed Domain Name on the GreatDomains.com website (where it is offered for sale by the Respondent) as "Like VISA & Master card, JCB Card is the *MAJOR* credit card in Japan" indicates the Respondentís full knowledge of the business of the Complainant and the association between the Disputed Domain Name and the business of the Complainant prior to any notice of this domain name dispute;

(c) the Disputed Domain Name does not currently resolve to any website or other online location thereby creating support for an inference that the Respondent is not interested in using the Disputed Domain Name except to block others from registering it, or to transfer it to the Complainant or a competitor of the Complainant;

(d) the Disputed Domain Name is advertised for sale on the <GreatDomains.com> website, indicating a desire to sell the Disputed Domain Name to the Complainant or a competitor of the Complainant; and

(e) the price that is set for sale of the Disputed Domain Name on the <GreatDomains.com> website is $14,999. In the experience of the Panel, this amount is far in excess of the out-of-pocket costs that are generally directly related to the registration of a domain name.

Since it has long been accepted that mere registration of a domain name is sufficient to constitute a Ďuseí of that domain name (such as a Ďblockingí use), and the Panel has satisfied itself that the Disputed Domain Name was registered for the reason outlined in sub-paragraph 4(b)(i) of the Policy, the Panel finds that the Complainant has made out paragraph 4(a)(iii) of the Policy.

 

7. Decision

The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been made out. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain name <jcbcard.com> be transferred by TUCOWS to the Complainant, JCB CO., Ltd.

 


 

Philip N. Argy
Sole Panelist

Dated: January 23, 2002