WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Onkyo Corp. v. PluggedIn Software

Case No. D2002-0785

 

1. The Parties

Complainant is Onkyo Corp., Osaka, Japan ("Complainant").

Respondent is PluggedIn Software, New York, United States of America ("Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <onkyo.com>.

The Registrar is Network Solutions, Inc., Virginia, United States of America. ("Registrar").

 

3. Procedural History

A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on August 21, 2002. The Center sent an Acknowledgement of Receipt of Complaint to the Complainant on August 22, 2002.

On August 22 , 2002, a Request for Registrar Verification was transmitted to the Registrar, and on August 26, 2002, the Registrar confirmed that it was in receipt of the Complaint and that it was the Registrar of the domain name. The Registrar forwarded the requested WHOIS details.

A Formal Requirements Compliance Checklist was completed by the Center and the Panel has independently determined and agrees with the assessment of the Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the WIPO Supplemental Rules"), in effect as of December 1, 1999. The Complainant paid on time and in the required amount the fees for a single member Panel.

On August 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of September 16, 2002, by which the Respondent could file a Response to the Complaint.

On August 29, 2002, Respondent requested for an extension of the term to file a Response. After hearing the Complainant, the Center decided to grant Respondent a 7 day extension. A request for further extension was refused.

Respondent filed a Response on September 23, 2002.

The Center then invited Mr. Knud Wallberg to serve as Panelist in the case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received the Statement of Acceptance and Declaration of Impartiality and Independence from Mr. Knud Wallberg, the Center transmitted on October 1, 2002, to the parties a Notification of Appointment of Administrative Panel and the Projected Decision Date.

The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.

The Administrative Panel has thus issued its Decision based on the Complaint, the Response, the Policy, the Rules, and the WIPO Supplemental Rules.

 

4. Factual Background

Complainant's business and trademarks 

Complaint is the owner of the trade name and trademark ONKYO as used in connection with audio equipment. Complainantís ONKYO products are one of the leading brands of consumer electronics in the world. Complainantís products are offered for sale and sold throughout the world, including the United States.

Complainant spends substantial sums each year to advertise and promote its ONKYO products, and enjoys worldwide sales of ONKYO products of approximately $400 million. In the United States sales of ONKYO products exceed $80 million each year. By virtue of its promotion and resultant sales success, Complainantís name and mark ONKYO for audio products has achieved a reputation for quality among consumers in the United States, who recognize and rely upon the ONKYO name and mark as identifying and distinguishing Complainantís products.

Complainant is the owner of several registrations for its mark ONKYO in the United States Patent and Trademark Office (Registration No. 917,997, Reg. No. 917,997, No. 1,390,598, No. 1,390,598 and No. 2,363,633)

One of the mediums through which Complainant advertises and promotes its products is through web sites using the name and mark ONKYO owned and operated by Complainant and its United States subsidiary, Onkyo USA Corporation. Complainant is the owner of a registration for the domain name <onkyo.co.jp>, utilizing the country code top level domain for Japan, at which Complainant operates a web site both offering for sale and selling its goods bearing its name and mark ONKYO as well as providing information regarding ONKYO products. Complainantís U.S. subsidiary Onkyo USA Corporation is the owner of the registration for the <onkyousa.com> domain name, at which a web site is operated similarly offering for sale and selling Complainantís ONKYO products as well as providing product information.

Respondent

No information on Respondent's general business or other activities has been put before the Panel.

 

5. Partiesí Contentions

A. Complainant

This Complaint is based on the following grounds.

Long after the first adoption and use by Complainant of the name and mark ONKYO, Respondent registered the disputed domain name <onkyo.com>. The disputed domain name registration owned by Respondent is identical to Complainantís ONKYO name and trademark.

Respondent does not operate a web site at the <onkyo.com> web site. A Copy of the page displayed when a user attempts to visit <onkyo.com>, printed on August 13, 2002, was attached as Annex 3. The contested domain name was registered in 1997. Since the registration of the contested domain name Respondent, upon information and belief, has never operated a web site at the <onkyo.com> domain name. Upon information and belief, consumers attempting to contact Complainant or to purchase products from Complainant through Complainantís web sites have been stymied by Respondentís registration and non-use of the <onkyo.com> domain name.

Upon information and belief, Respondent has been, and may presently be, in the business of providing technical support, servicing, product manuals and accessories in the field of consumer electronics and audio equipment. The e-mail address provided for the administrative and technical contact for the Respondent, mark@SUPPORTCITY.COM, corresponds to a registration for the domain name <supportcity.com>. A web site operated at the domain name <supportcity.com> has offered products and services to consumers of audio products, including services targeted specifically to Complainantís ONKYO products. Respondent is the owner of the registration for the <supportcity.com> domain name. A copy of a printout of a database search conducted on August 19, 2002, for the <supportcity.com> domain name was attached as Annex 4.

Complainant has attempted on numerous occasions to contact Respondent without success. A copy of one of Complainantís letters to Respondent, dispatched by certified mail and returned by the U.S. Post Office as "unclaimed," is attached hereto as Annex 5. Upon information and belief, the address provided by Respondent to the registrar with which the disputed domain name <onkyo.com> is registered is incorrect.

Upon information and belief, the Respondent (as an individual, business, or other organization) has not been commonly known by the name <onkyo.com>. Respondent owns no telephone listings for the names comprised by the contested domain name registration. Multiple searches have failed to identify any corporate filings or business listings of any nature owned by Respondent for the name <onkyo.com>.

Respondent has no right or legitimate interests in the contested domain name. There exists no relationship between Complainant and Respondent that would give rise to any license, permission or other right by which the Respondent could own any domain name incorporating the Complainantís name and mark ONKYO. Rather, Respondent, which, upon information and belief, has, through an affiliated company, offered and/or is offering products and services targeted directly to Complainantís ONKYO products, would appear to have registered the disputed domain name in an attempt to capitalize upon the fame of the ONKYO name and mark.

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

The contested domain names owned by Respondent are legally identical to Contestantís mark ONKYO which Complainant, through both prior use and federal registration, has rights. American Home Products Corporation v. Acaramba, WIPO Case No. D2000-0457.

The Respondent has no rights or legitimate interests in respect of the domain names;

Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. Complainant, on the other hand, has made substantial use of its name and mark ONKYO in connection with its goods. In the absence of any license or permission from Complainant to use its name and mark ONKYO or to apply for or use any domain name incorporating such mark, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain name could be claimed by Respondent. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.

Respondentís lack of any legitimate rights or interests in the contested domain name is also demonstrated by Respondentís knowledge of Complainantís ownership of the name and mark ONKYO. The domain name was registered by Respondent in 1997, long after Complainant had adopted the ONKYO mark. In addition to its apparent actual knowledge of Complainantís rights gained through the services relating to Complainantís ONKYO products rendered by Respondent at its affiliated web site, Respondent had constructive notice of the ONKYO mark, as a trademark search on the date of the domain name registration would have revealed Complainantís registrations of the ONKYO mark in the United States. eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259. Where a respondent has constructive notice of a trademark, and yet registers a confusingly similar domain name thereto, the respondent cannot be said to have a legitimate interest in the domain name.

The contested domain name <onkyo.com> does not resolve to an active site; accordingly, confused customers of the Complainant are likely to be frustrated in their efforts to reach the Complainantís web sites. Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802.

Indeed, Respondent has not undertaken a bona fide offering for sale of goods using the disputed domain names before notice of the dispute, and cannot establish rights or legitimate interests in the disputed domain name, thereby establishing the second element necessary for Complainant to prevail on its claim that Respondent has engaged in abusive domain name registration. The Frozfruit Company v. Maui Bound Media Group, WIPO Case No. D2000-0851. Rather, upon information and belief, Respondent has registered the disputed domain name solely for the purpose of attempting to trade upon the fame of Complainantís name and mark ONKYO in the field of audio equipment, a field in which Respondent has, through an affiliated company, has offered services.

The domain name was registered and is being used in bad faith.

The contested domain name has been registered in bad faith. Respondentís bad faith in registering and using the disputed domain name is manifested by the fact that, before any notice to the Respondent of this dispute, there has been absolutely no evidence of the Respondentís use of, or demonstrable preparations to use, the domain name (or any name corresponding to the domain name) in connection with a bona fide offering of goods or services. Such inaction, in view of the facts and circumstances of this case, further constitutes evidence of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The failure to make preparations to use a registered domain name for three years since the registration of the domain name is properly ruled to constitute bad faith registration and use. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384. Respondent here has made no use of the contested domain name since 1997 Ė a period of over five years Ė and is thus properly ruled to have registered and used the <onkyo.com> domain name in bad faith.

In addition, Complainantís attempts to contact Respondent have revealed that Respondent has supplied incorrect contact information to the registrar with which the disputed domain name <onkyo.com> is registered. Respondentís bad faith in registering and using the disputed domain names is thus also evidenced by Respondentís use, upon information and belief, of false identification information in the registry record of each of the domain names. Carfax, Inc. d/b/a Carfax v. Auto Check USA, WIPO Case No. D2001-0929.

Finally, as argued in Section VB, supra, Respondent, given the fact that a trademark search on the date of the domain name registration would have revealed Complainantís registrations of the ONKYO mark in the United States, had constructive notice of the ONKYO mark. The Policy states in clause 2 that by applying to register a domain name or by asking the registrar to maintain or renew a domain name registration, the domain name applicant (the Respondent here):

"Hereby represent and warrant to us that

(a) the statements that you made in your Registration Agreement are complete and accurate;

(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;

(c) you are not registering the domain name for an unlawful purpose; and

(d) you will not knowingly use the domain name in violation of any applicable rules or regulations.

It is your responsibility to determine whether your domain name registration infringes or violates someone elseís rights."

Respondent cannot credibly claim here that it had no knowledge as to whether or not its registration of the contested domain name was violating anotherís trademark. Thus, by failing to investigate third party rights in the U.S., the Respondent is properly ruled to have acted in bad faith in registering and maintaining the contested domain name. Skramedart, Inc. v. Neologist, Inc., WIPO Case No. D2000-1491.

B. Respondent

The Respondent requests the Administrative Panel to deny the remedies requested by the Complainant.

This is a clear case of attempted reverse hijacking. After many years of legitimate use by the Respondent, the Complainant is attempting to take advantage of the temporary unavailability of the website at <onkyo.com> to build a baseless case and hijack the domain. Rule 1 of the Rules 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." The Respondent believes the Complainant, in using the Policy in bad faith, is abusing the administrative proceeding and harassing the Respondent. As evidence of bad faith, this response will show that the Complainant knowingly provided false and deceiving information to the Panel.

Given the lack of evidence, false information provided, and the Complainantís specific knowledge of Respondentís legitimate interest in the disputed domain, it is implausible that the Complainant believes there is a legitimate claim against the Respondent.

The burden of proof in this proceeding rests with the Complainant. Paragraph 4(a) of the Policy directs that the burden be on the Complainant to establish each of the following elements:

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

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

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

It will be shown below that that Complainant fails to prove these three elements. The Respondent requests that the panel not only dismiss the case but also that the Complainant no longer be allowed to use these proceedings to harass the Respondent.

History of the <onkyo.com> Website

In February 1997, the Respondent made the decision to build a website dedicated to Japanese music. Mark Crone, a principal for the Respondent, had long been a fan of the genre and had traveled to Japan numerous times for both business and pleasure. He could rightly be called an expert on the topic. The site was to serve as a community in which users from around the world with a similar interest could communicate and trade various types of information, not unlike the numerous other types of communities built using the Internet as a medium. The site was to be developed and maintained by the Respondent on a part-time basis, primarily on nights and weekends.

A plan was developed for moving forward. A copy of this plan is contained in Annex 1. The Respondent determined that a certain amount of technical skill was required to execute the plan. To further develop the required technical skills, Mark Crone enrolled in a training class teaching the basic skills required to program in the Java programming language. In addition, a computer, the required software, and various business and technical publications were purchased. Annex 2 contains copies of receipts for both the training and these purchases.

In August 1997, it was determined that the site would be named <onkyo.com> Ė The Japanese On-Line Music Community" The word onkyo is defined as "sound or noise" in the Japanese language (as shown in Annex 3) and is also used to describe a specific genre of Japanese music (the "Onkyo Movement".) It is a common and well-known word. The Respondent determined that the very unique use of the term and the descriptive generic nature of the word would in no way infringe on any third-partyís rights. The domain name <onkyo.com> was registered on August 13, 1997.

After many months of development, the site was launched to the public on the World Wide Web in March 1998. It was hosted by Horizon Information Technology (a.k.a. OnePine Internet) located at 29 West 15th Street, New York, NY 10001. It included a wide variety of features including news on various genres of Japanese music, message forums, and an e-mailing list. From March 1998, until approximately October 2001, the site operated in an uninterrupted fashion at "http://www.onkyo.com" and/or "http://onkyo.com". Annex 4 contained a screen-shot showing the siteís home page as it appeared in June 2000. Annex 5 presented the credit card charges reflecting the monthly fees paid to Horizon for its services (the entire period of March 1998 to October 2001, is not included due to some misplaced statements.)

During its point of highest activity, the site was comprised of approximately 50 pages of HTML code and scripts, 100 images, and 2000 MPEG-3 files. In addition, there was a 50-megabyte SQL database used to store user information. The site achieved a registered user base of 1,777 from 17 different countries. It was used, on average, by 150 registered users per day and 325 users per day total. From March 1998 to October 2001, over 5000 messages were posted to the siteís message board and 3500 e-mails transferred via its mailing list. The site was publicized through word of mouth. At no point did the site generate any revenue, endeavor to sell any goods or services, accept advertising, or divert traffic to any other site.

In October 2001, Horizon Information Technology abruptly ceased operations without allowing customers to recover their files. As a result, the website and much of the supporting data were lost. The website has not been available to the public since.

However, the community still operates via an e-mail list allowing existing members to communicate amongst themselves. The volume of messages is approximately 30 per day. This list has been in constant uninterrupted operation since the site was launched (the list can be subscribed to by e-mailing subscribe_ mailinglist @onkyo.com with SUBSCRIBE in the subject line). It is the Respondentís plan to rebuild the website and continue to operate as before. Development is underway to ensure this plan. Development of the new site has taken a very long time since the Respondent works on the website on a part-time basis with very limited resources.

In the interim, there has always been a placeholder page at "http://www.onkyo.com" and "http://onkyo.com" making clear the site is a community intended to serve enthusiasts of Japanese music. Annex 6 contained a screenshot of the page as it appeared on September 20, 2002.

It is the Respondentís belief that the Complainant is attempting to take advantage of the Respondentís misfortune in losing the site by trying to build a baseless case ignorant of the long history of <onkyo.com>. The Complainantís case rests heavily on the claim that the Respondent has not been using the disputed domain. However, as described above, that claim is clearly false.

The Respondent hereby responds to the statements and allegations made by the Complainant relative to Paragraph 4(a) of the Policy.

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

Respondent acknowledges that Complainant has rights in the mark ONKYO and further agrees with Complainant that the domain name <onkyo.com> is identical to the service mark ONKYO in which Complainant has rights.

However, in evaluating the Respondentís actions relative the Complainantís claim on the mark, several points should be noted:

The word "onkyo" is defined as "sound or noise" in the Japanese language. Annex 3 contains a copy of the definition of the word from Websterís Japanese-English Dictionary. The word "onkyo" is generic, well-known, and used in many contexts. For instance, in searching the Centerís own website, results returned include references to "Nippon Onkyo Gakkaishi," which translates to "The Journal of the Acoustical Society of Japan." Another example is the well-known recording studio in Tokyo named "Onkyo House" (which appears to be owned by a competitor of the Complainant.) The word is also used to describe a specific style of electronic reverberating music common in Japan. This style of music began what is called the "Onkyo Movement." It is a musical style known throughout the world. A search for the phrase "onkyo movement" on "google.com" returns many results. All of these are examples of fair use of a generic descriptive term. Trademark law generally does not provide rights to use such terms. The Respondent has a legitimate interest in using descriptive generic terms in connection with legitimate business activities.

There is a clear connection between the definition of the word and the Respondentís use of the term.

There is little risk of confusion between the Respondentís and Complainantís activities. Trademark law in the United States clearly states that multiple parties may use the same mark where the goods of the parties are not so similar as to cause confusion among consumers.

Complainant is the owner of Registration No. 917,997 for its mark ONKYO in the United States Patent and Trademark Office for "radio sets, amplifiers, speakers, and speaker systems" and Registration No. 1,390,598 for its mark ONKYO for "high fidelity audio equipment, namely, amplifiers, tuners, tuner amplifiers, audio cassette decks, turntables, audio disk players." The Respondentís use is clearly different. No reasonable person would confuse the Respondentís very specific use of the term with a large, multinational firm manufacturing electronic equipment. The Complainant has provided no evidence of any confusion on the part of consumers nor has the Respondent ever been aware of any confusion.

In order to confront the potential confusion, the website located at <onkyo.com> has always contained a prominently displayed disclaimer. The screenshot shown in Annex 4 shows the language as it appeared on June 2000. As of September 20, 2002, this disclaimer reads, "This site is not affiliated with Onkyo, the electronics company. Their website is located at "www.onkyousa.com"" Under common law and the trademark registration procedures the world over, disclaimers have been accepted as a viable means to avoid possible association with similar right holders. See Satyam Computer Service Limited v. Vasudeva Varma Gokharaju. WIPO Case No. D2000-0835.

At the time the Respondent originally registered the domain, the Complainant already owned the two other domains mentioned in the complaint - onkyousa.com and onkyo.co.jp. Annex 7 shows the registration information from the WHOIS database for both these. Both of these domains had been registered in August 1995, more than two years before the Respondent registered the domain name in question. It was the Respondents belief that the Complainants failure to assert rights to the domain in question, while clearly being aware of the need to register other varieties of the mark, indicated a lack of desire to assert rights to the domain in question. The Respondent was clearly not being preemptive in the registration given the Complainantís ample opportunity to act first.

The complaint states that "consumers attempting to contact Complainant or to purchase products from Complainant through Complainantís web sites have been stymied by Respondentís registration and non-use of the <ONKYO.COM> domain name" Yet, the complaint provides no evidence of such a problem amongst consumers. Further, if this claim were true, it is inconceivable that:

- a large, professionally managed, global firm would allow such a long period to pass before acting to prevent their customers from being "stymied" from contacting them. According to the complaint, it took the Complainant at least 20 months to act upon the risk posed by the Respondent owning the name (August 13, 1997, until April 20, 1999). Upon failure, it then took the Complainant over three years before again acting by filing the complaint. This at a time when, presumably, the Complainant was very well aware of the importance of the Internet as a business medium.

- the Complainant would show such a distinct pattern of failing to protect the mark which they claim rights to. In addition to the disputed domain, the Complainant has, as of September 20, 2002, also failed to protect the names <onkyoelectronics.com>, <onkyoaudio.com>, <onkyocity.com>, <onkyo-usa.com>, <onkyo.us>, <onkyo.info>, <onkyo.biz>, <eonkyo.com>, and onkyo.name. Other parties own all of these. In fact, onkyoelectronics.com and onkyo-usa.com appear to be owned by a cyber-squatter directing traffic to other sites, and onkyo.us by a firm offering marketing services on the site. Annex 8 contains printouts showing the owners of these domain names. Further, the names< i-onkyo.com>, <ionkyo.com>, <onkyoamerica.com>, and <onkyoonline.com> have not been protected either. All of these are common permutations of the mark that, according to the Complainantís logic, are likely to cause confusion in the minds to consumers and pose a similar business risk. Yet, the Complainant neither owns these domain names nor, where others have registered them, has the Complainant filed complaints with the Center. A logical person must ask why, given the risks the Complainant describes, has the Complainant asserted rights towards the disputed domain but appears unconcerned by similar uses of the mark.

This lack of urgency and consistency in asserting rights is hardly indicative of the business risk the Compliant claims as a result of Respondentís ownership and use of the disputed domain.

The Respondent has no rights or legitimate interests in respect of the domain names;

The Policy was developed to control and correct abusive domain name registrations. The Complaint relies heavily in convincing the Panel that Complainant has deep-rooted rights in the mark ONKYO, and that it has more of a right than Respondent to use <onkyo.com>. However, Complainant has the burden of proving that Respondent has no legitimate interest in the domain name. The Complainant provides no such evidence. In fact, the complaint provides evidence of Complainantís specific knowledge of Respondentís legitimate interest.

Paragraph 4(c) of the Policy provides guidelines to consider in determining legitimate interest. Each of these three elements will be addressed below.

Before any notice to the Respondent, the Respondent was using, or making demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or service;

The disputed domain name is being used for legitimate non-commercial entertainment purposes. No goods or services have ever been offered or advertised nor are their plans to offer any.

Respondent has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights;

Clearly, prior to the development of the site, the Respondent was not known by the name in question.

Respondent is making a legitimate or non-commercial fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue;

Respondent is making a legitimate and non-commercial fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainantís mark. The Complainantís claims to the contrary are ridiculous and not supported by any evidence.

Since March 1998, the domain name has been in constant uninterrupted use to host a website and/or e-mailing list as described above. Yet, the complaint claims that "since the registration of the contested domain name Respondent, upon information and belief, has never operated a web site at the <ONKYO.COM> domain name." This statement is false.

As evidence for this claim, Annex 3 of the complaint includes a page purported to show that upon typing in the website name, no page appears. However, the page shown is a generic page generated by Microsoftís Internet Explorer browser. It is in no way specific to the website in question and in no way indicates that there is not a website operating at "http:///www.onkyo.com" or "http:///onkyo.com". A page such as this can be generate by typing the name of any website which does not exist or by simply disconnecting a computer from the Internet and trying to access any website. Providing this page as part of the complaint is a blatant attempt to dupe the Panel.

This claim can be proven false through the Complainantís own words. Annex 5 of the complaint contains a letter purported to have been sent to the Respondent in April 1999. In the letter, the Complainant specifically refers to the website residing at <onkyo.com> and acknowledges that "The contents found at < onkyo.com > reveal that PluggedIn Software identifies this site as ĎThe Japanese On-Line Music Communityí." This shows that there was a site residing at <onkyo.com> and the Complainant was well aware of its content and legitimate use.

These two factors together are of a clear indication of the Complainantís attempt to deceive the Panel through knowingly providing and false misleading information.

The domain name was registered and is being used in bad faith.

The domain name was not registered nor has it been used in bad faith. The complaint contains numerous false statements and inferences based on "information and belief" intended to build a baseless case against the Respondent and hijack the disputed domain. Specifically, the false accusations in the complaint include:

Complaint states that "since the registration of the contested domain name Respondent, upon information and belief, has never operated a web site at the < onkyo.com > domain name." The complaint contains several similar statements to the same effect. These claims are false. The domain name has been used as described above. Complainant later contradicts these statements by admitting to knowledge of the website, its content and legitimate use.

Complainant claims to have "attempted on numerous occasions to contact Respondent without success." The complaint contains several similar statements to the same effect. These claims are false. The complaint provides just one example of attempted communication. That attempt was not successful. No communication has every been received from the Complainant prior to receiving the complaint itself (received via e-mail on August 26, 2002).

In an attempt to deceive the Panel, the Complainant references a letter sent on April 20, 1999, to the Respondent (Annex 5 of the complaint). It was returned to the Complainant as "unclaimed." This is used as evidence of the Respondent having provided an incorrect address. However, "unclaimed" simply means that no party was available to sign for the letter during the delivery attempt(s). It does not indicate an incorrect address. If the address had been incorrect, it would have been returned with a status of "not deliverable as addressed," "insufficient address," or something clearly indicating an incorrect address. See Annex 9 for information from the USPSís Domestic Mail Manual describing "unclaimed" and other possible endorsements. This claim is a blatant attempt to deceive the panel.

Many means were available to the Complainant with which to reach the Respondent including physical delivery to a location a mere five miles removed from the Complainant representativeís office. Yet, save for the single attempt via mail claimed by the Complainant, no attempt was made to reach the Respondent during the five years the Respondent has owned the domain. No phone call, FAX, or e-mail has ever been received nor does the Complainant claim to have used any of these readily available methods.

Complainant claims that "Respondent has supplied incorrect contact information to the registrar with which the disputed domain name < onkyo.com > is registered." This statement is false. The Respondents e-mail address, phone number, and mailing address have always been accurately reflected in the WHOIS database, from the time of original registration until the present.

Had the postal address information been incorrect, it would have been impossible to receive renewal invoices. Yet, all were received. Annex 10 contained a copy of utility bills sent to the administrative contact at the address on file with the registrar at approximately the time of the April 20, 1999, letter. It also contains a copy of a utility bill sent to the current address on file with the registrar.

Had the e-mail contact information been incorrect, it would have been impossible for the Respondent to change the server information for the domain given that the Registrar uses the "Mail-From" certification method. Yet, this information was changed several times. Furthermore, the complaint was received by the Respondent via e-mail from both the Complainant and the Center and immediately acknowledged thus proving that the e-mail address was correct.

A simple search in the phone book or any of the numerous on-line phone directories (e.g. switchboard.com, four11.com) reveals that the phone number listed for the administrative contact of the domain is identical to that listed in the WHOIS database. Annex 12 contained printouts showing information from several of these sources. The mailings address and phone number is identical to the administrative contact of the Respondent.

Complainant claims that "Respondent has been, and may presently be, in the business of providing technical support, servicing, product manuals and accessories in the field of consumer electronics and audio equipment." The complaint contains several similar statements to the same effect. These statements are false. There is not nor has there every been a connection between the website and any business providing any of these services. This claim is a ridiculous inference drawn from the fact that the administrative contact for the domain in question is the same as the contact for <supportcity.com> (a domain being used for nothing more than a single e-mail address). The Complainantís attempt to create a further connection between the two is a fabrication and not supported by any evidence provided.

Furthermore, the domain <supportcity.com>, which was at one point owned by the Respondent, was long ago transferred (for no consideration) from the Respondent to SupportCity.com LLC, a Delaware corporation, located at 227 West 29th Street, NY, NY 10001. The transfer took place in early 1999. There has never been any connection between any website run by SupportCity.com LLC and the website at <onkyo.com>. Further, SupportCity.com LLC has never provided the services claimed in the April 20, 1999, letter. SupportCity.com LLC is now defunct and has not hosted a website since May 2001. The sole connection between the two domains is that they share an administrative contact. The Respondent acknowledges that the information on file with the Registrar was not properly updated for this domain. However, this is irrelevant given that <supportcity.com> is not the disputed domain.

The complaint claims "by failing to investigate third party rights in the U.S., the Respondent is properly ruled to have acted in bad faith in registering and maintaining the contested domain name" and that the Respondent thereby violated Clause 2 in the Policy. This claim is false. There is significant evidence to the contrary. The Policy was put in place on October 24, 1999, more than 2 years after the initial registration of the domain. With that in mind, the Policy clearly does not apply to the period of registration from August 1997 until August 2000.

In August 2000, when the Respondent was faced with renewing the registration under the Policy, to the best of the Respondentís knowledge, the registration did not infringe on any third-partyís rights since:

The word "onkyo" is descriptive and generic in nature. It has been decided in many other cases that knowledge of a trademark registration does not constitute bad faith where, as here, the term is used descriptively or generically. See Jeffrey S. Thompson d/b/a The Wedding Planner v. Wedding Channel.com, lnc., WIPO Case No. D2002-0086, Choice Courier Systems, Inc. v. William H. Kirkendale. WIPO Case No. D2002-0483, or Todito.com, S.A. de C.V. v. Michele Dinoia, WIPO Case No. D2002-0620.

The Respondent believed there was little risk of confusion between the Respondent and Complainantís given their distinctly different activities. Trademark law in the United States clearly states that multiple parties may use the same mark where the goods of the parties are not so similar as to cause confusion among consumers.

Since the Complainant failed to assert any rights to the name during the period of August 1995 (when both <onkyousa.com> and <onkyo.co.jp> where acquired) and August 1997 (when the Respondent registered <onkyo.com>), it was the Respondents belief that the Complainantsí failure to act, while clearly being aware of the need to register other varieties of the mark, indicated a lack of interest in asserting rights to the domain in question.

The Complainantís failure to assert any rights or contact the Respondent during the period of 1997 until 2000, a period of which (March 1998 until August 2000) the domain was in very active and evident public use, reinforced the Respondentís belief that the Complainant had no concerns with the use of the mark. Given the multitude of potential communication methods available, the Complainant cannot credibility claim to have made a good faith effort to contact the Respondent.

The Complainant had failed to protect the mark in many other similar instances as described above.

The Panel may disagree with the Respondentís evaluation of applicable trademark law. However, the Respondent (with the help of informal outside counsel) believed these points to be true when the domain was registered and renewed. At present, even given the contents of the compliant, has no reason to believe otherwise.

Furthermore, in deciding whether the Respondent registered the domain name in bad faith, Paragraph 4(b) of the Policy sets out certain non-exclusive factors that should be considered. The complaint fails to prove any of these elements exist. Specifically, the following should be noted:

No attempt has been made to sell, rent, or otherwise transfer the domain name to the Complainant, a competitor, or any other party for consideration or otherwise. Unlike many cases brought before the Center, the Respondent is not and has never been in the business of trading in domain names or cyber-squatting and has never sold or offered for sale any domain name. While the Respondent does own several other domain names, no cases have ever been brought against the Respondent alleging any type of unfair use.

The domain name was registered for a specific legitimate use and not to prevent the Complainant from using the name.

The Respondent is not a competitor of the complaint nor has there been any attempt to disrupt the Complainantís business. Traffic has never been diverted to any other site.

The website located at <onkyo.com> has never been used for commercial purposes, nor are there any plans to do so. It has been used for entertainment purposes only. No revenue has been ever generated by the Respondent or any other party as a result of the Respondentís use of the domain.

Reverse Hijacking

Rule 1 of the Rules 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".

Respondent believes to have provided the Panel with sufficient evidence of Complainantís "bad faith" to prove the case for reverse hijacking. Specifically,

Complainant knowingly provided false information in regards to specific knowledge of there being a website operating at <onkyo.com>. The Complainant had knowledge of the Respondentís legitimate interest in the dispute domain yet proceeded to bring the case before the Panel.

Complainant, in providing a generic page from Microsoftís Internet Explorer not specific to the domain in question (as described in paragraph 7(B)(iii) above), is attempting to deceive the Panel.

In providing evidence of the attempted contact via mail, the Complainant grossly misrepresents the definition of "unclaimed" in a transparent attempt to deceive the Panel.

Complainant claims Respondentís contact information has been/is incorrect yet a simple search in the phone book or on-line reveals that this claim is false. Again, this is a blatant attempt to deceive the Panel.

It has been shown that the Complainant has knowingly provided false evidence and attempted to deceive the panel while bringing this complaint. In bringing the case while knowing of the Respondentís legitimate interest and lack of bad faith, the compliant has been filed in bad faith. It has been found by other Panels that this constitutes sufficient evidence to determine reverse hijacking. For example, see Hola S.A. and Hello Limited v. Idealab, WIPO Case No. D2002-0089.

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

The Panel will not deal with all the allegations contained in the Complaint and the Response, but only those that are of particular relevance for taking a decision in the case before the Panel.

Identical or Confusingly Similar

The Complainantís mark "ONKYO" is a distinctive word that is registered and has been used in a number of countries including in the country of residence of respondent USA. The contested domain name contains the mark in its entirety with the addition of the .com gTLD denomination.

The domain name is thus identical to the trademark in which the Complainant has rights, which, it should be noted, is undisputed by the parties in the case.

The requirements set out in the Policy, Paragraph 4(a)(i) are therefore fulfilled.

Legitimate Interest and Bad Faith

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.

Further, the Respondent has not demonstrated that he has any prior rights in the domain name and no evidence has been put before the Panel that shows that Respondent was commonly known by the domain name before that time.

However, Respondent has provided information that ONKYO is a common word in Japanese, meaning "sound, noise", and has provided proof that the corresponding web site "www.onkyo.com" at least at some point has been used as a web-site for Japanese music. The Panel must therefore consider whether this use of the contested domain name can constitute fair or noncommercial use for the purpose of these proceedings.

This is a difficult issue in which several factors must be considered.

On the one hand words that carry a meaning can function as trademarks as long as they are not descriptive of the goods and services for which the mark applies. On the other hand such words can also be used in their generic sense, and such use will not be considered as infringing any trade mark rights in the word. The exceptions to this effect that the various trademark laws contain, does however not permit the possible fair user to use the said words as a "business identifier", i.e. as a sign that is used to identify the users activities. In view of the Panel, a domain name that is used as a name for a corresponding website is to be regarded as a "business identifier".

In this case the Respondent claims that he registered the contested domain name to set up a web site containing information on Japanese music in general. As mentioned above, Respondent is free to use the word "onkyo" in its generic sense on such a website, but not necessarily free to use the word as the domain name for such a site. The Panel is not entirely convinced by Respondent's explanation on why the contested domain name was chosen. In the view of the Panel a natural domain name to choose for a website in such instance could be the Japanese word for music (音楽) transcribed to Latin letters or for instance <japanesemusic.com> or a domain name of similar nature and not <onkyo.com>. This is true even if there is a specific musical genre called the Onkyo Movement.

Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.

Complainantīs mark ONKYO is registered in the USA. Respondent recognizes this and has not disputed that he knew of the existence of Complaints rights when he registered the contested domain name.

The website "www.onkyo.com" is presently semi-active by way of a standard setup-page provided by Respondents ISP. In addition Respondent has provided evidence of the previous use.

There is no evidence that the Respondent has tried to sell the name, just as there is no evidence of a pattern of conduct of cyber squatting. However, given the undisputed notoriety of Complainants mark the registration and use of the domain name will undoubtedly attract internet users to Respondent's web site, and the vast majority of Internet users will be more likely to expect that the web site "www.onkyo.com" contains information on Complainant, rather than information on Japanese Music. The registration and use of the domain name by the Respondent will thus be likely to create confusion among these users and thereby disrupt the business of the Complainant. Further it is clear that Respondent's registration of the contested domain name prevents Complainant from being present under the gTLD .com under a name that most accurately reflects its trademark. The Panel considers that this must have been clear to the Respondent from the outset.

Under these circumstances, use of a disclaimer, which in principle is a factor that may be used as an argument for defense, will not serve the purpose of avoiding the initial confusion that arises from use of the domain name?

Weighing all the factors and considerations, the Panel finds that the preconditions set forth in Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy are also met.

Reverse domain name hijacking

Reverse Domain Name Hijacking is defined in the Rules as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. Given the circumstances described above the Panel dismisses Respondentís claim on this point.

 

7. Decision

In view of the above circumstances and facts the Panel finds that the domain name <onkyo.com> registered by the Respondent is identical to the trademark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain names, and that the domain name has been registered and is being used in bad faith.

Consequently, the Panel decides that the domain name be transferred to the Complainant.

 


 

Knud Wallberg
Sole Panelist

Dated: October 14, 2002