WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wacoal Corporation and Wacoal America, Inc. v. SecureWhois, Inc.
Case No. D2007-1528
1. The Parties
1.1 The Complainants are Wacoal Corporation, of Kyoto, Japan and Wacoal America, Inc., of New York, United States of America, represented by Morrison & Foerster LLP, United States of America.
1.2 The Respondent is SecureWhois, Inc., of Illinois, United States of America.
2. The Domain Name and Registrar
2.1 The domain name at issue is <wacoalamerica.com>, which is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.
3. Procedural History
3.1 A complaint was submitted to the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2007. The Center sent the Complainants an Acknowledgment of Receipt, dated October 21, 2007.
3.2 On October 18, 2007, a request for registrar verification was transmitted to the registrar, InnerWise, Inc. On the same day, the registrar, Tucows Inc. on behalf of InnerWise, Inc. confirmed by reply e-mail that it was in receipt of a copy of the Complaint sent by the Complainants; confirmed that the domain name at issue is registered with InnerWise, Inc.; confirmed that the corporation identified as the Respondent is the current registrant of the domain name; provided the full contact details for the domain name registrant; confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applies to the disputed domain name; indicated the date of expiry of the domain name; confirmed that the domain name will remain on registrar hold and lock during the pending administrative proceeding; indicated the language of the registration agreement as being English and confirmed that the registrant submitted its Registration Agreement to the jurisdiction at the location of the principal office of the registrar for court adjudication of disputes concerning or arising from the use of the domain name.
3.3 On October 23, 2007, the Center determined that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the Supplemental Rules.
3.4 In accordance with the Rules, paragraph 2 (a) and 4 (a), the Center formally notified the Respondent of the Complaint to the facsimile number, postal and email addresses provided by the registrar, and the proceedings commenced on October 23, 2007. Copies of this notification were sent to the Complainants and the registrar via email on the same date. The Center did not receive notice of any failure of receipt in response to the notifications sent. Having reviewed the communications records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent”.
3.5 Having received no response from the Respondent within the specified time in the Notification of Complaint, on November 14, 2007, the Center issued to both parties a Notification of Respondent Default. On November 29, 2007, the Center issued to both parties a Notification of Appointment of Administrative Panel, Projected Decision Date, and a copy of the document relating to the Transmission of Case File to the Administrative Panel. This Notification informed the parties that the Panel would be comprised of a single Panelist, Mr. Perry J. Viscounty, Esquire. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.1 The Complaint asserted and provided evidence in support of, and the Panel finds established, the following facts.
The Complainants’ Activities
4.2 The Complainants are engaged in the design, manufacture, and distribution of intimate apparel. Since at least as early as 1980, the Complainants have used the WACOAL trademark, and related trademarks, in connection with intimate apparel, and have worked to develop an international reputation for luxurious, high-quality products in the United States of America, Asia, and Europe.
The Complainants’ Trademarks
4.3 The Complainants have obtained numerous WACOAL trademark registrations worldwide, including the following in the United States of America and Europe: W WACOAL (1983), WACOAL (1994), WACOAL TOUCH (2004), WACOAL (1999), and WACOAL & design (1999). Both the W WACOAL and WACOAL marks have become incontestable under United States federal trademark law as a result of the Complainant Wacoal Corporation’s continuous use of the marks for more than five years from the date of registration, and its subsequent filing of Section 15 Affidavits for each of the marks in 1989 and 2000, respectively.
4.4 In addition, the Complainants have numerous WACOAL trademark applications pending worldwide, including the following in the United States of America: WACOAL DIA (filed 10/23/2003), WACOAL DIA (filed 10/23/2003), and WACOAL LUXE (filed 5/10/2007).
4.5 The Complainants also own the domain name <wacoal-america.com>, which they registered in April of 1996 and through which they have operated a website since at least March of 2000. At the site, visitors can learn about the company and Wacoal products, including styles, sizes, and care instructions. In addition, visitors can locate retailers in their geographic area, or be directed to online retailers, where they can purchase wacoal products. The website displays the Complainants’ WACOAL mark and references WACOAL throughout the site.
Respondent’s Identity and Activities
4.6 The Respondent is the registrant of the domain name <wacoalamerica.com>. In or about August 2007, the Complainants became aware that the Respondent was using the disputed domain name in connection with a website containing links to pornographic, adult-oriented websites. When an individual visits the website corresponding to the domain name at issue, he/she is connected to a site with the heading “Wacoalamerica.com”, which displays adult-oriented photographs and links.
4.7 Prior to issuing the Complaint, on or about August 28, 2007, the Complainants sent to the Respondent a cease and desist letter demanding that it immediately cease all uses of “Wacoal” and transfer the disputed domain name to the Complainants. The Complainants never received a response from the Respondent. Sometime after August 28, 2007, the website located at the disputed domain name was altered to specifically display the WACOAL trademark and added the feature of providing links to retailers of Complainants’ WACOAL products. There is no relationship between the Complainants and the Respondent which would give rise to any license, permission or authorization to use the domain name. The Complainants have not authorized or licensed the Respondent to use the Complainants’ trademark, nor is the Respondent a retailer or distributor of the Complainants’ products.
5. Contentions of the Parties
5.1 The Complainants contend that they have trademark rights in WACOAL and other variations thereof listed in paragraph 4.3, supra, and that by virtue of the longstanding use of and promotional activities surrounding the trademark, it is known throughout the world and is deserving of the highest degree of protection.
5.2 The Complainants contend that the Respondent’s domain name <wacoalamerica.com> is identical or confusingly similar to the Complainants’ WACOAL trademarks listed in paragraph 4.3, supra.
5.3 The Complainants contend that the Respondent has no rights or legitimate interests with respect to the disputed domain name <wacoalamerica.com>.
5.4 The Complainants contend that the Respondent’s domain name <wacoalamerica.com> was registered and is being used in bad faith.
5.5 The Respondent did not file a response to the Complaint.
6. Relevant Provisions of the Uniform Policy
6.1 Paragraph 4(a) of the Policy requires the Complainant to establish the following three elements in order to obtain relief:
(i) [The Respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) [The Respondent] has no rights or legitimate interests in respect of the domain name; and
(iii) [The Respondent’s] domain name has been registered and is being used in bad faith.
6.2 Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the Respondent’s registration and use of the domain name in bad faith:
(i) 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; or
(ii) you have registered 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
6.3 Paragraph 4(c) of the Uniform Policy further identifies, in particular but without limitation, three circumstances which, if found by the Administrative Panel to be present, shall demonstrate the Respondent’s rights or legitimate interests to the domain name:
(i) before any notice to you of the dispute, your use of, or 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 services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or 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.
7. Findings and Conclusions
Identical or Confusingly Similar
7.1 The domain name at issue is <wacoalamerica.com>. The Complainants have registered trademarks for WACOAL and related marks. It is well established that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is identical or confusingly similar to the registered trademark. See e.g., Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746 (August 17, 2006) (noting that a number of WIPO Panel decisions rely on this principle). The Panel believes that is particularly the case where, as here, the distinctive portion of the disputed domain name is the Complainants’ trademark. The Respondent’s addition of the suffix “america” to the disputed domain name does little to diminish the similarity between it and the Complainants’ marks. In Red Bull GmbH, the Panel noted that the use of a “purportedly distinguishable suffix does not, in and of itself, differentiate” a disputed domain name from a trademark. On the contrary, because the Complainants’ corporate name is Wacoal America, Inc., and because the Complainants’ registered domain name is <wacoal-america.com>, the Panel finds that the Respondent’s inclusion of the suffix “america” actually enhances the impression that the domain name is related to the Complainants. Finally, the inclusion of the suffix “.com” is not sufficient to render the domain name dissimilar. See News Holding Limited v. Steve Kerry/WWW Enterprise, Inc., WIPO Case No. D2006-1374 (January 24, 2006) (holding that the “.com” suffix is irrelevant for trademark purposes and thus does not distinguish the domain name from the trademarked term).
7.2 Thus, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainants’ WACOAL trademarks.
Rights or Legitimate Interests
7.3 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, discussed supra, which could give rise to a right to, or legitimate interest in, the domain name. The Respondent’s use of the disputed domain name to redirect customers to third party websites offering adult-oriented pornographic goods and services does not constitute a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use. See Yahoo! Inc. v. Denis Jalbert, NAF Case No. FA166020 (August 26, 2003) (holding that such use fails to satisfy either subsection).
7.4 Further, there is no evidence that the Respondent was commonly known by the domain name prior to registering it. See Compañía de Radiocomunicaciones Móviles S.A. and BellSouth Corporation v. Juan Bolinhas d/b/a "MOVICOM BELLSOUTH”, WIPO Case No. D2000-0915 (October 5, 2000) (defining “commonly known” as an entity that was “effectively known by third parties by the domain name before the moment of registration”). The Respondent has no prior rights in the name “Wacoal”, an apparently invented word, and is not authorized by, affiliated with, or sponsored by the Complainants. The only apparent reason the Respondent might have for selecting the domain name <wacoalamerica.com> would be to misappropriate the Complainants’ goodwill or otherwise profit commercially from the Complainants’ trademark. The use of a domain name to attract customers to a website by creating consumer confusion with another’s trademark cannot constitute rights or legitimate interests in the domain name. See Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 (March 22, 2000).
7.5 The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Registered and Used in Bad Faith
7.6 As discussed supra, paragraph 4(b) of the Policy identifies certain non-exclusive circumstances which, if found by the Panel to exist, constitute evidence of bad faith. The Complainants assert, and the Panel hereby finds, that the Respondent’s use of the disputed domain name to redirect customers to third party websites offering adult-oriented pornographic goods and services both benefits the Respondent and tarnishes complainants’ marks. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Pearson Network S.A., WIPO Case No. D2006-1271 (November 27, 2006) (“Implicit in the UDRP is the principle that the use of a domain name constitutes bad faith when a respondent seeks to, or recklessly has the effect of, tarnishing the good name of a complainant whom that respondent willfully seeks to associate with pornographic material”); Napster, Inc. v. John Gary, WIPO Case No. D2005-0913 (October 11, 2005) (holding that a website which functions as a directory service for other websites containing adult content is liable to harm the trademark holder’s business).
7.7 Additionally, given the unique nature of the trademarked term WACOAL, and the fact that the disputed domain name incorporates the trademark in its entirety, it is impossible for the Panel to conclude other than that the Respondent registered the domain name in bad faith, and, in utilizing the domain name, intentionally attempted to attract the Complainants’ users to its website, for commercial gain, by creating a likelihood of confusion with the Complainants’ marks. See Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (finding bad faith where panelist could not “conceive” of a situation in which the Respondent would have been unaware of the fact that it could not legitimately use a term subject to numerous trademarks).
7.8 In light of the above, the Panel concludes that through the Respondent’s registration and use of the disputed domain name, it has purposely disrupted the business of the Complainants and intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark, thus demonstrating the requisite “bad faith”, pursuant to paragraphs 4(b)(iv) of the Policy.
The Panel decides that the Complainants have proven each of the three elements in paragraph 4(a) of the Policy.
8.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wacoalamerica.com> be transferred to the Complainants.
Perry J. Viscounty
Dated: December 13, 2007