WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha NTT DoCoMo (NTT DoCoMo Inc) v. MariaMedia AG
Case No. DBIZ2002-00164
1. The Parties
The Complainant is Kabushiki Kaisha NTT DoCoMo (NTT DoCoMo Inc) of 11-1 Nagatacho 2-chome, Chiyoda-ku, Tokyo, Japan, which is represented in the present proceeding by Mark Hiddleston of Clifford Chance LLP, 200 Aldersgate Street, London, United Kingdom.
The Respondent is MariaMedia AG of Stadelhoferstrasse 42, Zurich, Switzerland.
2. The Domain Name and Registrar
The disputed domain name is <i-mode.biz> and the registrar is Netbenefit d/b/a/ Netnames, 11 Clerkenwell Green, London, United Kingdom.
3. Procedural History
3.1 The Complaint was received by email by the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2002, and in hard copy on April 29, 2002.
3.2 On May 7, 2002, the Center acknowledged receipt of the Complaint, and, following review of the documentation, the Center requested amendment of the Complaint with respect to certain minor details, namely the name and address of the Registrar and the mutual jurisdiction clause. These details were duly amended by the Complainant on June 7, 2002 (by email), and on June 12, 2002, (in hard copy).
3.3 On June 17, 2002, the Center completed a check of whether the Complaint complied with the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("STOP"), the Rules for Start-up Trademark Opposition Policy for .BIZ ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").
3.4 On June 17, 2002, the Respondent was notified of the STOP Complaint and Commencement of the Administrative Proceeding and was sent a copy of the Complaint and attachments. This was sent by post/courier and email to the addresses appearing under the Registrant and Administrative Contact for the domain name registration. In accordance with the Rules, the date for the filing of a Response was set at July 7, 2002.
3.5 No Response was received by the Center and on July 10, 2002, the Center sent the Respondent a Notification of Respondent Default by email.
3.6 On July 29, 2002, after receiving the required Statement of Acceptance and Declaration of Impartiality from the proposed panelist, the Center notified the parties of the appointment of Staniforth Ricketson as the single member Administrative Panel in the proceeding. The date for transmission of the Panel’s decision to the Center was set at August 12, 2002, in accordance with paragraph 15 of the STOP Rules.
3.7 After perusing all the materials filed in the proceeding, the Panel finds that the relevant requirements of the STOP, the STOP Rules and WIPO Supplemental STOP Rules have been complied with.
3.8 In accordance with paragraph 11 of the STOP Rules, the language of the proceeding is English (this being the language of the registration agreement).
4. Factual Background
4.1 According to the Complaint, the Complainant is one of the world’s largest telecommunications companies and provides email services and access to internet services and browsing facilities to customers via mobile phones.
4.2 The Complainant asserts that it has been using the mark "i-mode" and "I MODE" in relation to these services since February 1999 and refers to a large number of trade and service mark applications in relation to these marks worldwide, as well as to a small number of national registrations (Taiwan and New Zealand).
4.3 It appears from the WHOIS database that the Respondent has been the registrant of the domain name <i-mode.biz> since March 27, 2002 (Complaint, Annex A, WHOIS printout).
5. Parties’ Contentions
A successful complaint brought under STOP must establish the three elements that are listed in paragraph 4(a). The Complainant in the present proceeding addresses these elements briefly as follows:
- As to the first element (domain name identical to a trade or service mark in which the Complainant has rights), the Complainant asserts that it has used its mark "i-mode" since February 1999 in Japan and now has over 20 million users of its services under that mark worldwide. It refers to samples of press coverage since 1999 (Annex 3) and notes its use of the mark at a worldwide telecommunications forum in Geneva in October 1999. It has also applied for registration of "i-mode" and "I MODE" in various classes of goods and services in a wide number of countries since this time (list attached in Annex 5, together with various application details). In particular, it notes that it is the registered owner of marks comprising this word in both Taiwan and New Zealand (Complaint, pp 6-7) although no details of these registrations are given in the Annex. Finally, the Complainant alleges that it has acquired rights in the mark on an unregistered basis in Japan because of its substantial use, and that the mark now constitutes a well known mark within the meaning of article 6bis of the Paris Convention. No specific evidence in support of these last contentions is provided.
- As to the second element (Respondent’s lack of rights or legitimate interests in domain name), the Complainant states that it has seen no evidence, and is not aware that the Respondent has provided any evidence, of its legitimate interest in the mark "i-mode".
- As to the third element (bad faith by the Respondent in the registration or use of the domain name), the Complainant argues that this is established by the following circumstances. First, the substantial press coverage worldwide that the Complainant has received for services under the mark "i-mode" and "I MODE". Secondly, the fact that the Complainant promoted these services in 1999 at one of the world’s leading telecommunications exhibitions and is currently expanding its usage of the mark worldwide and in Europe. These circumstances, it is submitted, make it impossible that the Respondent could not have been aware of the Complainant’s interest in the mark "i-mode" at the time of its application to register the domain name. The Complainant also submits that registration and use of the "i-mode" domain name as a website will inevitably lead to confusion with the internet-related services provided by the Complainant and will lead customers to believe that there is some link or association with the Complainant. Finally, it is submitted that the registration of the domain name will inevitably block the potential for the Complainant to expand its use of the mark "i-mode" in the future.
As noted above, the Respondent has filed no Response in the proceeding. Under paragraph 5(e) of the STOP Rules, in such a case the Panel is to decide the dispute based on the Complaint. Furthermore, under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, the Panel is entitled to "draw such inferences therefrom as it considers appropriate".
6. Discussion and Findings
Under paragraph 4(a) of STOP, the Complainant must prove the presence of each of the elements listed in that paragraph.
Domain name identical to trade or service mark in which the Complainant has rights (sub-paragraph 4(a)(i))
The Complainant has provided somewhat disparate evidence with respect to its trade and service mark rights in "i-mode" and "I MODE". So far as registrations of the mark are concerned, it seems that these have only been achieved in Taiwan and New Zealand, but there is some ambiguity in the material provided on this question (the list in Annex 5 does not refer to these registrations). On the other hand, it seems that the Complainant has a large number of applications for registration in train in a number of countries, and this certainly reflects its general assertions about the usage of the mark that has occurred and the worldwide scope of its activities. Moreover, the press clippings in Annex 3 provide further evidence of the Complainant’s operations and of the fact that its mobile phone services were provided with reference to the term "i-mode". The volume, duration, intensity and nature of this usage is far from clear, but, in the absence of any submissions from the Respondent, the Panel is prepared to conclude that overall the Complainant has shown that it has "rights" in the "i-mode" mark for the purposes of paragraph 4(a)(i).
As to the second requirement of that paragraph 4(a), namely identity between the domain name and the Complainants’ mark, this is also satisfied: the domain name <i-mode.biz> is clearly the same as the trade mark "i-mode", disregarding here the .biz suffix in the domain name.
Accordingly, the Complainant has satisfied the requirements of sub-paragraph 4(a)(i).
Lack of rights or legitimate interests of Respondent in domain name (sub-paragraph 4(a)(ii))
Paragraph 4(c) refers to various matters that can be shown by a Respondent that will be evidence of rights or legitimate interests in a domain name by a Respondent, including ownership of an identical trade mark, the use of the domain name or a corresponding name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by that name. As noted above, the Respondent has not filed any response in the proceeding and the Complainant submits that it has found no evidence of any legitimate interests that the Respondent may have in the domain name. Furthermore, it is clear that the Complainant has not consented to the Respondent to using the domain name or to apply for its registration. In the absence of any evidence filed by the Respondent, the Panel is entitled to draw the inference that it has no rights or legitimate interests in the domain name.
Accordingly, the second element of paragraph 4(a) is established.
Bad faith in registration or use of the domain name (sub-paragraph 4(a)(iii))
Unlike the Uniform Domain Name Dispute Resolution Policy, there is no requirement to show bad faith at both the stages of registration and use of a disputed domain name: the presence of bad faith at either stage will suffice. In determining this, it is relevant to consider whether any of the circumstances listed in paragraph 4(b) of the Policy are present.
In the present proceeding, there is no evidence from the Respondent concerning its intentions and reasons for registering the domain name, and there is no evidence as to any use that it intends to make of the name. In such circumstances, the Panel is entitled to draw such inferences from this default, as it thinks appropriate. On the uncontested evidence presented by the Complainant, it seems that the latter has made widespread use of the mark "i-mode" in relation to its mobile phone and Internet services and it is therefore reasonable to infer that the Respondent must have had some knowledge of the Complainant and its services. In this regard, it is worth noting that "i-mode" is hardly a common or everyday expression, but appears rather to be a coined or invented expression. Accordingly, the chances of the Respondent adopting such a name quite independently of any knowledge of the Complainant appear small, and, in the absence of a Response, the Panel is entitled to draw an inference adverse to the Respondent. A further relevant matter is the complete lack of evidence relating to any use of the domain name by the Respondent, or of any preparations by it to use the name, in relation to any business, or any other evidence indicating that it has some legitimate interest in the domain name (as required by sub-paragraph 4(a)(ii)). In the light of all this, the Panel is prepared to infer that these circumstances indicate that the Respondent’s registration of the domain name was made in bad faith.
In addition, even if the registration was not made in bad faith, it is difficult to "conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate" (Fiat Auto S.p.A. v Italienska bil, WIPO Case No. DBIZ2001-00030). Any use of the domain name must inevitably divert Internet users who want to locate the makers and suppliers of "i-mode" services and products, and would mislead them into thinking that they had reached a webpage operated by the Complainant (with obvious disappointment, when they find they have not done so). It is noteworthy that under STOP it is not open to a Respondent to rely upon an intention of fair non-commercial use as a means of showing a legitimate interest in the domain name and thereby as a counter to an allegation of bad faith registration and use.
Accordingly, the Panel finds that the third element of paragraph 4(a) is established.
The Panel concludes that the Complainant has satisfied each of the elements of paragraph 4(a) that need to be shown by a successful Complainant under the STOP.
The Panel therefore directs that the domain name <i-mode.biz> should be transferred to the Complainant.
Dated: August 12, 2002