The Complainant is Olympus Corporation of Tokyo, Japan, represented by Ratza & Ratza, Romania.
The Respondent is Zheng Hua of Jurong East, Singapore.
The disputed domain name <olympus-u12.com> is registered with DomainSails.net LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010. On March 12, 2010, the Center transmitted by email to DomainSails.net LLC. a request for registrar verification in connection with the disputed domain name. On March 12, 2010, DomainSails.net 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” 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2010.
The Center appointed Fabio Angelini as the sole panelist in this matter on April 13, 2010. 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.
Since the language of the Registration Agreement is English, the Complaint was submitted in English and the Complainant requested that the language of proceedings be English, in light of paragraph 11(a) of the Rules which provides that, subject to the authority of the Panel, the language of the proceedings shall be the same as the language of the Registration Agreement, in absence of parties' agreement to establish otherwise, the Panel will issue this decision in English.
The following factual background is derived from the Complaint and annexes thereto, all of which is undisputed by the Respondent and found by the Panel to be plausible.
Olympus Corporation (hereinafter referred to as “Olympus”) is a Japan-based company that manufactures optics and imaging products. Olympus was established on October 12, 1919, initially specialized in microscope and thermometer businesses. The company is named after Mount Olympus, the home of the 12 supreme gods and goddesses in Greek mythology. In Japanese mythology, it is said that eight million gods and goddesses live in Takamagahara, the peak of Mount Takachiho. Takachiho is the name of the predecessor of Olympus Corporation. The company selected the name "Olympus" as the trademark because Mount Olympus, like Mount Takachiho, was the home of gods and goddesses.
In 1949, the name changed to Olympus Optical Co., Ltd., in an attempt to enhance its corporate image. In 2003, the company name changed again, to Olympus Corporation, to unify the corporate name and the well-known brand.
Olympus has a long history in camera and lens design. The company is a leading manufacturer of digital cameras, with a large range of compact digital cameras. Olympus is also the exclusive owner of a substantial number of trademark registrations for the name Olympus, all over the world, including the trademark registration number 777136 dating back 2001, in Singapore, where the respondent allegedly resides.
Moreover, the Complainant is the exclusive owner of several official sites, like http://www.olympus-global.com/en/global/, http://www.olympus.co.jp, and http://www.olympusamerica.com.
Finally the Complainant has been sponsoring the Japanese Youth Soccer Championship (commonly known as Under 12 or U12) for several years. Previously, the domain name <olympus-u12.com> was used for a website to support and cheerlead Elementary school soccer teams, but on April 2009 this website was closed. On April 15, 2007, the registrant of <olympus-u12.com> was the Japanese company “Astra The Studio Inc.” that operated the official website and was authorized by the Complainant to use the OLYMPUS trademark. On September 9, 2008 the ownership changed to “R.V.C Inc” and on April 26, 2009 this domain name was deleted by the registrar. On June 1, 2009 <olympus-u12.com> was re-registered by the Respondent.
The disputed domain name currently redirects users to other websites, unrelated to Complainant and/or selling wares and other products, including products manufactured by the Complainant's competitors.
The Complainant's contentions, to the extent not reproduced in the Factual Background section, are set forth in the Discussion and Findings section below in the context of the three elements required for a transfer of the Domain Name under the Policy.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name has been registered and is being used in bad faith.
The Complainant has registered trademark rights in the name OLYMPUS all over the world and in Singapore as well as shown by the data provided by the Complainant and independently verified by the Panel.
The Domain Name incorporates Complainant's mark in its entirety, and simply adds the descriptive term U12 which, as indicated in the Factual Background clearly refers to an Under 12 youth soccer league.
In the Panel's view, the additional term, which is not distinctive, does not diminish, but actually increases the confusing similarity between the Complainant's mark and the Domain Name, (as similarly held in Lacoste Alligator S.A. v. China Bizseas, WIPO Case No. D2009-0493: “Compared to the Trademark, the Domain Name <lacoste-shopping.com> completely reproduces the former with the only difference being the mere addition of the generic term “shopping” and the generic top-level term “.com”. However, neither of these two terms is sufficient to differentiate the disputed domain name from the Trademark. Instead, the addition of the generic term “shopping” is more likely to mislead Internet users into believing that the sites linked to the Domain Name are the official sites of the Complainant or in some way associated with the Complainant, when in fact this is not”).
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
The Respondent may establish its rights or legitimate interests in the Domain Name, in accordance with paragraph 4(c) of the Policy by showing, among other circumstances, any of the following elements:
(i) before any notice to the Respondent of the dispute, 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) The Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if the Respondent has not acquired trademark or service mark rights; or
(ii) The Respondent is 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.
While the Complainant bears the burden of proof on the “rights or legitimate interests” issue nevertheless, the Panel agrees with PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174, which held that “A [r]espondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.”
The Respondent did not file a Response and as such may accept the reasonable and supported assertions of the Complaint to be true. As such, the Panel evaluating the circumstances of the case notes that on the records there is no evidence that:
1) The Respondent has ever been authorized to use the Complainant's mark in a domain name or otherwise;
2) The Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
3) The Respondent has ever claimed or may claim a noncommercial or fair use of the OLYMPUS mark in its Domain Name, and the Panel cannot find any basis for recognizing any such use.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating 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 that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 the Respondent's website or location or of a product or service on the Respondent's website or location.
The Complainant alleges that the Respondent has not chosen the Domain Name randomly but for an illegitimate commercial use. According to Complainant, Respondent registered such a domain name because:
- the Domain Name was for several years an official website linked with the Complainant's sponsored activity; and
- OLYMPUS is a well-known trademark; and
- to take advantage of the Complainant reputation using this Domain Name to redirect users to other websites.
Furthermore, the Complainant alleges another element to corroborate its claims that the Domain Name was registered and used in bad faith: apparently the Domain Name is not the only domain name identical to a well-known trademark registered by the Respondent.
In fact, using the “Whois Record” tool available at “DomainTools.com” the Complainant discovered that there are more that 2,361 domain names owned by “Zheng Hua” such as
<TagHeuerReplicaWatch.com> and <Koelnmesse.asia> and also full name of famous people such as <Rachael-Ray.org>; in addition and there are 1,623 domain names associated with the contact email “[ ]@gmail.com”.
Against these serious allegations the Respondent did not provide any explanations or reasons as to why he had registered the Domain Name in the first place and he is using it in the manner which the domain name is currently used, nor as to why it registered such a large number of domain names which in the Panel's view seem readily associated with third party trademarks.
Therefore, the Panel finds that the Complainant has thus successfully established the circumstances listed under paragraph 4(b)(ii) and 4(b)(iv)of the Policy and accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <olympus-u12.com> be transferred to the Complainant.
Dated: April 19, 2010