WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mori Seiki Co. Ltd. v. Texas International Property Associates
Case No. D2007-1795
1. The Parties
The Complainant is Mori Seiki Co. Ltd., Chicago, Illinois, United States of America, represented by Horwood Marcus & Berk Chartered, United States of America.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Names and Registrar
The disputed domain names <mori-seiki.com> and <moriseikiusa.com> are registered with Compana LLC.
3. Procedural History
A Complaint concerning these disputed domain names was previously filed, and subsequently withdrawn without prejudice to the filing of a new Complaint, due to administrative deficiencies.
The Amended Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2007. On December 11, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. On December 18, 2007, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2008. The Response was filed with the Center on February 18, 2008. The Respondent indicated there a willingness to transfer the domain names to the Complainant.
Following this, the Center notified the parties that they could request a suspension of these proceedings to enable the transfer of the domain name to proceed. The Complainant requested such a suspension on February 21, 2008. Accordingly, the proceedings were suspended on February 27, 2008. On March 26, 2008, the Complainant requested the lifting of the suspension in view of the fact that the transfer had not taken place.
The Center appointed Adam Samuel as the sole panelist in this matter on April 7, 2008. 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
The Complainant owns a United States of America trademark Registration, Number 2720298, dated June 3, 2003, for MORI SEIKI. The Respondent registered the domain name <moriseikiusa.com> on January 30, 2005 and <mori-seiki.com> on February 15, 2006.
5. Parties’ Contentions
These are the Complainant’s contentions. The Panel does not necessarily accept them in their entirety.
The Complainant is a global corporation. It has manufactured, marketed and sold worldwide more than 165,000 lathes, machining centers, multi-axis turning centers, grinders and other heavy equipment pieces, since 1970. It conducts its business through a network of technical centers. The technical centers located throughout the United States of America are overseen and operated by a wholly owned subsidiary that has done business under the name Mori Seiki U.S.A., Inc. since 1984.
Prior to January 2005, the Respondent had never done business or otherwise held itself out to the public at large as a business entity identified by the term “Mori Seiki” alone or in combination with any other hyphenated or geographically qualified version of the “Mori Seiki” tradename.
When a domain name incorporates a distinctive mark in its entirety, there is presumed to exist a sufficient similarity between the mark and the domain name to render the domain name confusingly similar. The presence of a hyphen in the first of the two disputed domain names (“mori-seiki”) is not a substantive distinction that impacts the issue of whether the subject domain name is confusingly similar to the Complainant’s registered trademark. Similarly, the addition of the geographic term “usa” as a suffix in the second of the two disputed domain names (“moriseikiusa”) does not constitute distinction sufficient to avoid a finding of confusing similarity.
Both of the two disputed domain names are linked to static websites that are used by the Respondent to merely redirect web traffic to one or more alternative websites maintained by third-party entities who are in the business of marketing and selling used and refurbished heavy industrial equipment that is identical or substantially similar to the industrial equipment manufactured by the Complainant. Neither of the two disputed domain names are linked to an active website that is owned and operated by the Respondent. The fact that the Respondent does not maintain active websites in connection with either of the disputed domain names is strong evidence of the lack of a right or legitimate use on the part of the Respondent.
The Respondent is an established cybersquatter and has been or is a party to a number of additional cybersquatting claims, both before panels appointed by the World Intellectual Property Organization and the National Arbitration Forum.
The Respondent registered the two disputed domain names primarily for the purpose of disrupting the business of the Complainant and steering potential purchasers to websites maintained by various third-party competitors of the Complainant.
The Respondent has attempted to profit by attracting internet users to the Respondent’s websites based on the similarity between the two disputed domain names and the Complainant’s trademark, as well as the name of its wholly owned United States subsidiary, Mori Seiki, U.S.A., Inc. Upon information and belief, the Respondent’s profit-seeking activity has created a likelihood of confusion between the Complainant’s mark and its products, and the source of the sponsorship, affiliation or endorsement of the Respondent’s websites and the web content found therein.
The Respondent registered the two domain names in order to prevent the Complainant from registering corresponding domain names that incorporate the term “Mori Seiki”, as evidenced by the pattern of cybersquatting conduct previously engaged in by the Respondent.
The Respondent contends that it would have transferred the domain names in dispute prior to the institution of the current proceeding. It agrees to the relief requested by the Complainant and will, on the order of the Panel transfer the domain names to the Complainant without admitting the three elements that the Complainant is required to prove under the Policy. It requests that the Panel order the immediate transfer of the disputed domain names.
6. Discussion and Findings
The Respondent raises a preliminary issue as to how the Panel should deal with this case. It requests an order for the transfer of the disputed domain names without findings as to elements that the Complainant would otherwise have to prove under the Policy.
In The Cartoon Network LP, LLLP v. Mike Morgan WIPO Case No. D2005-1132, the Panel said:
“A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
“There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer ‘deems’ proved the three elements of paragraph 4(a) of the Policy.
“However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).”
The panel in Accolo, Inc. v. Texas International Property Associates, WIPO Case No. D2008-0168 took the same view.
Ultimately, though, Paragraph 10(a) of the Rules gives the Panel a broad discretion to conduct the proceeding in such manner as it considers appropriate. The Rules provide no further information on how to deal with this type of case.
There are a number of factors to be considered here. The Complainant has not agreed to the Respondent’s suggestion. Ostensibly, it has presented a Complaint which it wants the Panel to determine and is entitled to receive a decision on it. Having said that, this is an administrative proceeding and no decision will bind a subsequent court or tribunal required to determine the same or similar issues between these parties. Equally, though, an agreed decision could be used for purposes outside the scope of the Policy. Here, though, there is no evidence of any such thing. Finally, the Complaint is complete and does not require the Panel to take any procedural steps. So, there is little or no waste of resource involved in issuing a decision.
The Panel concludes in the circumstances that it would be more appropriate to make a decision on the merits of the Complaint. The parties have each had an opportunity to present their case. The Complainant has filed a Complaint requesting the Panel to issue an order transferring the domain names. For these reasons, the Panel rejects the Respondent’s request and proceeds to make a decision on the merits of the Complaint.
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns a United States trademark registration for the mark, MORI SEIKI. The first disputed domain name consists of that mark with a hyphen between the two words involved and the addition of the generic “.com”. The latter is not relevant to a finding of confusing similarity under the Policy because all domain names need a generic suffix to work. The addition of a hyphen which has no effect on the pronunciation of the word does not prevent the domain name from being confusingly similar to the Complainant’s trademark. See, eg., Gund Inc. v. Dean Gagnon, WIPO Case No. D2008-0195.
The second disputed domain name combines the Complainant’s trademark with the letters “usa” clearly standing for the United States of America. These letters were again assumed not to affect confusing similarity in General Electric Company v. Marketing Total S.A WIPO Case No. D2007-1834. This is particularly the case here where the Respondent is based in the United States and the Complainant operates a subsidiary in that country using an almost identical name.
For all these reasons, the Panel concludes that both domain names are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “Mori Seiki” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has never asserted any rights or legitimate interests in that name.
For these reasons, on the basis of the available record, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The domain names involve the use of two Japanese words in a domain name which resolves to a website operating exclusively in English. In English, these two words have no meaning except as the Complainant’s trademark. This suggests strongly that the Respondent selected the domain names because of its awareness of the Complainant’s trademark rights.
A search of the WIPO database reveals that the Respondent has been involved in 38 decided cases brought in relation to cybersquatting. In each case, the Panel ordered the transfer of the domain name or names. This all suggests that the Respondent’s motive in registering the disputed domain names was to use the Complainant’s trademark to attract Internet users to its website or to persuade the Complainant to buy back the website.
The Respondent has used the domain names to create a website which promotes websites offering goods which compete with the Complainant’s. The fact that the Respondent is using the disputed domain name to divert customers to competitors of the Complainant is further evidence of bad faith.
The Panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068, agreed that this type of behavior constituted bad faith. It said:
The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.
This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith … In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.
For similar reasons, the Panel concludes that the Respondent has both registered and used the domain names in bad faith.
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 names, <mori-seiki.com> and <moriseikiusa.com> be transferred to the Complainant.
Dated: April 16, 2008