WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NORIS Tachometerwerk GmbH & Co. v. Norifusa Sakata
Case No. DBIZ2002-00013
1. The Parties
The Complainant in this administrative proceeding is NORIS Tachometerwerk GmbH & Co., of Nürnberg, Germany.
The Respondent in this administrative proceeding is Mr. Norifusa Sakata, of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name is <noris.biz>. The Registrar of the domain name is Global Media Online Inc.
The Registry operator has assigned an appropriate ticket number.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the Policy"), the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> (the WIPO Supplemental STOP Rules).
The Complainant filed its STOP Complaint with the WIPO Arbitration and Mediation Center ("the Center") on April 18, 2002, by email and on April 23, 2002, by hardcopy. On May 16, 2002, having verified that the STOP Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On June 19, 2002, the Center issued a Notification of Respondent Default.
The Administrative Panel consisting of one member was appointed on July 8, 2002, by the Center.
An examination of this material confirms that all technical requirements of this proceeding were met.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
4. Factual Background
The following information is derived from the Complainant.
The Complainant develops, produces and sells sensors, indicators and display units for all kind of vehicles all around the world. NORIS is a well established brand in this field with a high reputation in terms of quality and reliability.
The trademark NORIS was registered by the Complainant as follows: Germany on September 30, 1982, reg. no. 1039020; United States on March 25, 1986, reg. no. 1387299, International on May 31, 1983, reg. no. 476118; for the following products:
mechanical, electrical and electronic measuring, display, alarm, control, starting switching, monitoring, recording and regulating units; mechanical tachometers, temperature switches; speed switches; analog moving coil indicators for speed, temperature, pressure, current and voltage applications; alarm units for monitoring diesel engines; automatic starting units for use with diesel engines; marine engine control and monitoring consoles; recorder and printer for speed, temperature and pressure readouts; temperature monitors, temperature indicators and centralized display module.
Since the registration of the trademark, NORIS has always been in use as the brand for products of the Complainant.
The Complainant is known worldwide as "NORIS" by most people dealing with the type of products it sells. Due to the difficult pronunciation of Tachometerwerk, most people especially in Asia only talk of NORIS instead of NORIS Tachometerwerk.
The respondent is an individual person who is active in the sport of motorbikes. He is not a business organization and is not identified with the subject domain name.
The products (esp. indicators) of the Complainant are used in motorbikes and should be well known to the Respondent.
The complainant admits that there are other companies that have a legitimate interest in the subject domain name. NORIS is an ancient name for the city of Nürnberg (Germany), where the Complainant as well as other companies are located. NORIS is part of the company name of some of them (e.g. NORIS Bank). The Respondent has no connection to Nürnberg.
The Respondent filed no material in this proceeding.
5. Partiesí Contentions
The Complainant relies on its use and registration of the word "noris" and says that the subject domain name is identical. It notes that the Respondent is active in the sport of motorbikes and must have known of the Complainantís mark when he registered the subject domain name. In addition, the Respondent is not known by the subject domain name. He does not use the subject domain name in commerce and has no connection to the City of Nürnberg, the ancient name of which was Noris.
Bad faith is said to be established by facts which suggest the Respondent was aware of the Complainant mark and his lack of any legitimate interest in or connection with the word "noris".
The Respondent did not participate in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered or is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
It is clear that the Complainant has rights to the word "noris". The subject domain name differs only by the addition of .biz which is not relevant.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondentís Legitimate Interest
The Respondent does not appear to be known by the word "noris". He carries on no business associated with it. As a motorcyclist he apparently would know of the Complainant, its mark and products.
The Administrative Panel has observed a similarity between the Respondent's first name and the subject domain name, but on the information provided to the Administrative Panel by the Complainant, there does not appear to be any actual link between the Respondent and the subject domain name. Although given the opportunity to do so, the Respondent has provided no contrary information.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The Complainantís case concerning bad faith is weak. It is based on supposition and inference with no apparent attempt to ask the Respondent to surrender the subject domain name.
A finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another, does not of itself lead to bad faith, but the facts that support the finding are relevant to the issue.
A respondent is not required to participate in a domain name dispute and its failure to do so does not constitute an admission of allegation made against it. Unlike the rules and practice of domestic courts, failure to participate in an international commercial arbitration, with which domain name disputes are more closely analogous, does not result in default awards or admissions. The danger a respondent faces is that inferences that flow from the information provided by a complainant will remain unrebutted and assertions of fact which are not unreasonable will be taken as true.
In this case, it is a reasonable inference that the Respondent knew of the Complainant, its products and its mark when he registered the subject domain name. He has no legitimate interest in it. Registration blocks the Complainantís ability to acquire the subject domain name that is identical to the mark with which it carries on business. The Respondent has made no effort to address the logical thread of these facts and the Complainantís allegation that they lead to a conclusion of bad faith.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information provided to it and on its finding, the Administrative Panel concludes that the Complainant has established its case. The Complainant requests that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: July 14, 2002