The Complainant is Pleasure Cake SL of Malaga, Spain, represented internally.
The Respondent is TechTools of Nijmegen, Netherlands.
The disputed domain names <tengashop.com> and <tengawholesale.com> are registered with MyDomain, Inc. d/b/a NamesDirect.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2009. On May 6, 2009, the Center transmitted by email to MyDomain, Inc. d/b/a NamesDirect a request for registrar verification in connection with the disputed domain names. On May 6, 2009, MyDomain, Inc. d/b/a NamesDirect 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” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 17, 2009. The Respondent's default was notified on June 18, 2004. The Respondent filed a communication dated June 1, 2009 received by the Center electronically on June 24, 2009.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 1, 2009. 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 paragraph 7 of the Rules.
On July 6, 2009, the Panel issued Procedural Order No. 1 to the parties, requesting the Complainant within five days as of the date of the Order to specify the nature of the relationship between the Complainant and Kabushiki Kaisha Tenga (also trading as Tenga Co., Ltd.), to submit corresponding evidence, and to describe the Complainant's legal position regarding International Trademark no. 934985 (the “TENGA Mark”) owned by Kabushiki Kaisha Tenga (also trading as Tenga Co., Ltd.). The Complainant filed a reply to Procedural Order No. 1 on July 15, 2009.
The Complainant in this administrative proceeding is Pleasure Cake SL of Malaga, Spain, a European distributor of TENGA products. TENGA is a Japanese brand of male masturbation toys. International Trademark No. 934985 TENGA (the “TENGA Mark”) is owned by Kabushiki Kaisha Tenga (also trading as Tenga Co., Ltd.).
The Respondent in this administrative proceeding is a Dutch company named TechTools which is selling TENGA sex toys and owns the following domain names in addition to the disputed domain names: <tenga.eu>, <tenga.nl>, <tenga.be>, <tenga.at>, <tenga.dk>, <tenga.se>, and <tenga.pl>.
The disputed domain names were both registered on November 3, 2005.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain names are identical or confusingly similar to the TENGA Mark as they include the word “tenga”. The Complainant claims that the Respondent is just selling TENGA products, effectively being a TENGA shop. The Complainant further contends that it is only official European distributor of TENGA products, and that it is co-operating with and authorized by Kabushiki Kaisha Tenga (also trading as Tenga Co., Ltd.) to actively look after the European trade mark of TENGA. The Complainant also suggests that the Panel ask a certain Mr. Sato at Tenga Co., Ltd. for further proof.
(2) The Respondent has no rights or legitimate interests with regard to the disputed domain names as the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web sites, by creating a likelihood of confusion with the trademark at issue to sell the TENGA products and to confuse the public into thinking it is legitimately linked to Kabushiki Kaisha Tenga (also trading as Tenga Co., Ltd.). The Complainant further contends that the Respondent registered the disputed domain names in order to prevent the owner of the TENGA trademark and its European distributor from reflecting the mark in a corresponding domain name.
(3) The Complainant finally contends that the domain names were registered and are being used in bad faith. The Complainant states that the domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring them to the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain names, as Respondent on purpose and selfishly bought every domain name associated with the owner's mark. By using the disputed domain names, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's web site for both retail and wholesale, by creating a likelihood of confusion with the mark at issue as to the source, sponsorship, affiliation, and endorsement of the Respondent's products.
The Respondent states that the Complaint came as a surprise as negotiations between the parties had been going on for quite some time. While the Respondent contends that the disputed domain names were registered with a view to TENGA sex toys, it claims that the other domain names owned by the Respondent containing the word TENGA were inspired by a dance called “tenga”.
The Respondent further contends that it originally intended to distribute TENGA products but could not get in touch with the Japanese supplier. The Respondent maintains that it was the first company to show TENGA products outside Asia and claims that the Complainant's website reveals striking similarities to the Respondent's website already existing at the time the Complainant's website was set up.
According to the Respondent, there are many websites that look like official TENGA websites. The Respondent claims that it never acted in bad faith, that it got TENGA products from the Complainant and that it also sold items from brands other than TENGA. The Respondent never meant to cause confusion.
The Respondent did not file its Response within the time limit set by the Policy but only after notification of its default. It is unclear why the Response was dated June 1, 2009 but not received by the Center until June 24, 2009. According to paragraph 14 of the Rules, the Panel need not consider the Response in this case (but can take it into account if there are good reasons to apply its discretion) and may draw inferences considered appropriate. Responses submitted late were considered by previous panels in the past, in particular where they were filed before commencement of the decision-making process (see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035) or where the lateness did not delay the decision (see Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591). The Panel is also aware of decisions by previous panels rejecting out of time responses.
Nor did the Complainant file its reply to Procedural Order No.1 within the time limit set by the Panel.
However, it is irrelevant for the outcome of the present case whether the Response and the Complainant's reply to Procedural Order No.1 are accepted and the Panel therefore does not need to make a finding in this regard.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trade mark; 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.
The disputed domain names both fully include the TENGA Mark. However, it is questionable whether the Complainant enjoys rights in the TENGA Mark. It has been established by previous panels that a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark may enjoy rights in a trademark under the UDRP, depending on the scope of the license (see NA PALI SAS v. BWI Domains, Domain Manager, WIPO Case No. D2008-1859 discussing various types of licenses). In the present case, the Complainant does not even rely on a license but merely states without providing any evidence that it is authorized “to actively look after” the TENGA Mark.
In order to give the Complainant a fair opportunity to clarify the nature of the relationship between the Complainant and the owner of the TENGA Mark, Kabushiki Kaisha Tenga (also trading as Tenga Co., Ltd.), and to describe the Complainant's legal position regarding the TENGA Mark the Panel issued a Procedural Order. However, no additional facts or evidence were submitted by the Complainant, not even in the late reply to Procedural Order No. 1. Under these circumstances, in the view of the Panel, the vague authorization to look after a third party's trademark is not sufficient to convey “rights” under the Policy leading to the transfer of a disputed domain name.
As to the Complainant's suggestion that the Panel contact a representative of Kabushiki Kaisha Tenga (also trading as Tenga Co., Ltd.) for further proof, paragraph 15(a) of the Rules instruct panels to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. The UDRP is based on the adversary system and not on the inquisitorial system (see Nike, Inc. v. Crystal International, WIPO Case No. D2002-0352; Ascendes Corporation dba MarketTouch v. Market Touch Limited, WIPO Case No. D2001-1186) and it is not for the Panel to complete the evidentiary record of the Complainant's case.
Since the Complainant has failed to establish the first element of the Policy, there is no need to enter into a discussion of whether the Respondent has rights to or legitimate interests in the disputed domain names and whether they were registered and used in bad faith.
The present decision does not establish any rights of the Respondent in the disputed domain names, nor prevent future proceedings brought by a party able to prove rights in the TENGA Mark.
For all the foregoing reasons, the Complaint is denied.
Dated: July 14, 2009