WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Seiko Holdings Kabushiki Kaisha (trading as Seiko Holdings Corporation) v. Fundaction Private Whois, Domain Administrator
Case No. D2012-0810
1. The Parties
The Complainant is Seiko Holdings Kabushiki Kaisha (trading as Seiko Holdings Corporation) of Tokyo, Japan, represented by Baker & McKenzie, United Kingdom of Great Britain and Northern Ireland (“the United Kingdom”).
The Respondent is Fundacion Private Whois, Domain Administrator of Panama city, Panama.
2. The Domain Names and Registrar
The disputed domain names <ladiesseikowatches.com>, <seikouk.com>, <ukseikowatches.com> (collectively, “the Domain Names”) are registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 18, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the Domain Names. On April 20, 2012 Internet.bs Corp. 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”).
The Center formally notified the Respondent of the Complaint on April 20, 2012, although the Written Notice of the Complaint was not then sent to the Respondent’s Panama address as advised by Internet.bs Corp. In accordance with the Rules, paragraph 5(a), the stated due date for Response was May 10, 2012. The Respondent did not submit any response by that date.
The omission to send the Written Notice of the Complaint to the Respondent’s Panama address was rectified by the Center on May 14, 2012, when formal notification was sent by courier addressed to that address. A letter sent by the Center with the May 14, 2012 notification document requested that the Respondent let the Center know by May 20, 2012 if it wished to file a Response. The letter advised that if no such request was made, the Center would proceed to appoint a panel after May 20, 2012.
No such request was made by the Respondent, and the Center notified the Respondent’s default on May 21, 2012.
The Center appointed Warwick Smith as the sole panelist in this matter on June 1, 2012. 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.
By Administrative Panel Procedural Order No. 1 dated June 13, 2012, the Panel invited submissions from the Complainant on the effect of the omission to provide the Written Notice to the Respondent at its Panama address before May 14, 2012 (and in particular, on the question of whether the Respondent should be entitled to additional time to submit a Response). The time for the Panel to give its decision in the case was extended to June 22, 2012.
The Complainant provided its submissions in response to Administrative Panel Procedural Order No. 1, by email dated June 15, 2012.
By Administrative Panel Procedural Order No. 2 dated June 19, 2012, the Panel extended the time for the Respondent to submit a Response to 5 PM on June 27, 2012 (Geneva time). The time for the Panel to give its decision in the case, was further extended to June 28, 2012.
In the event, no Response was filed by June 27, 2012, and no communication has been received from the Respondent.
4. Factual Background
A. The Complainant
The Complainant is part of a world-famous watch manufacturing group. The group commenced operations in Japan in 1881, and watches were first marketed under a Seiko brand in 1924.
The Complainant holds numerous registrations for the word mark SEIKO around the world. It produced evidence of registrations in the United Kingdom (the earliest filing dates from 1963), the United States of America (the earliest registration dating from 1959), and Japan (the earliest registration dating from 1925). It also holds a Community Trademark registration for its SEIKO mark.
The Complainant owns the domain names <seiko.com> and <seikowatches.com>, and its United Kingdom subsidiary, Seiko U.K. Limited, owns the domain name <seiko.co.uk>. The Complainant registered the <seiko.com> domain name in June 1993.
The Complainant operates websites at “www.seikowatches.com” and “www.seiko.co.uk”. The first of those websites provides web links to country-specific websites which offer the Complainant’s range of Seiko-branded watches.
B. The Respondent and the Domain Names
The Domain Names were registered on February 23, 2012.
The Complainant says that it has not authorized the Respondent to register or use any domain name consisting of or containing the expression “seiko”.
The Complainant further asserts that the Respondent has not been commonly and legitimately known by any of the Domain Names.
The Complainant produced screen shots taken from each of the Domain Names, although it is not clear to the Panel when these screen shots were taken. Each of the screen shots prominently featured a SEIKO mark, with a prominent picture of a Seiko watch alongside a group of five players dressed in the uniform of the Barcelona Football Club. The screen shots from the websites at “www.ladiesseikowatches.com” and “www.seikouk.com” featured the Complainant’s SEIKO mark as part of a rectangular device with a crest on one side and the words “Official Watch Partner of FC Barcelona” immediately below.
The website at “www.ladiesseikowatches.com” offered “Authentic Seiko Watches Online at Discount Prices l Official Seiko UK stockists”.
The website at “www.seikouk.com” included the following text:
“We are an official Seiko watches company which base in London, UK. We delivery the watches to all the areas in UK and around the world with Free Delivery cost!”
The Complainant says that the promotional photographs which appear on the websites at the Domain Names are owned by a member of the Complainant group, and that the use of these photographs infringes copyright owned by that company.
The Complainant says that its subsidiary company Seiko U.K. Limited has received complaints from customers regarding the websites operated at the Domain Names. The complaining customers have been concerned that the websites are a scam.
The Complainant itself attempted to conduct test purchases from the websites at “www.seikouk.com” and “www.ukseikowatches.com” , but in both cases found that it was impossible to make a payment and purchase watches. The Complainant says that when messages were sent via the “Contact Us” section of the websites at these Domain Names seeking to purchase watches, no response was received, other than an email welcoming the purchaser to their “account”. The Complainant produced with its Complaint redacted screen shots of its credit card order form and the email received in response to its purchase enquiry. The order appears to have been unsuccessful, as it was returned with the advice: “Internal error: Authorisation declined”.
The email the Complainant received briefly described online purchase facilities said to be available through the websites at the Domain Names. For help with any of the Respondent’s online services, the enquirer was invited to contact “the store-owner” at a gmail address which included the expression “seikouk”.
C. Panel’s Visit to the Websites at the Domain Names
In accordance with normal practice, the Panel has visited the websites at the Domain Names. That occurred on June 19, 2012. The website at “www.ladiesseikowatches.com” appeared to be in substantially the same format as the screen shot for that website which the Complainant had produced with the Complaint. This website offered “authentic high-quality seiko uk huge discount watch…. Every seiko watch we sell is authentic and in the manufacturer’s original packaging”.
A link entitled “Conditions of Use” took the Panel to a website which did not appear to contain any relevant text. A page entitled “News” provided access to various web posts concerned with such matters as watch maintenance, giving watches as a gift, and choosing water-resistant sports watches.
Again, the Panel did not note on this website any disclaimer or other text explaining that the Respondent has no commercial or other connection with the Complainant.
The website which the Panel visited at “www.ukseikowatches.com” appeared to be in similar format to the other websites at the Domain Names. It appeared to offer only Seiko watches, all at discounted prices, and it contained a 2012 copyright notice in similar form to that which appeared on the other two websites. Again, the Panel did not note any disclaimer or other text advising that the Respondent has no commercial or other connection with the Complainant.
The promotional photograph featuring footballers from FC Barcelona appeared on all three websites visited by the Panel on June 19, 2012.
5. Parties’ Contentions
The Complainant contends:
1. Each of the Domain Names is confusingly similar to the Complainant’s SEIKO trademark.
2. The Respondent has no rights or legitimate interests in the Domain Names. The Complainant relies on the following:
2.1 The Complainant has not authorized the Respondent to register domain names consisting of or containing the Complainant’s SEIKO mark;
2.2 The Respondent has not been commonly and legitimately known by any of the Domain Names;
2.3 The Complainant has established a worldwide reputation in its SEIKO mark going back for many years. Its registration of the SEIKO mark in the United Kingdom dates from 1963, and its domain names <seiko.com>, <seiko.co.uk>, and <seikowatches.com> have been registered since 1993, 1997, and 1998 respectively. These factors indicate that the Respondent is not making a legitimate use of the Domain Names.
2.4 The Respondent is not an authorized distributor of the Complainant’s products, and has been infringing the Complainant’s SEIKO mark by using that mark on the Respondent’s websites.
3. The Domain Names were registered in bad faith. The Complainant relies on the following:
3.1 The Respondent registered the Domain Names as a blocking registration, to prevent the Complainant from registering alternatives to its <seikowatches.com> domain name (Policy, paragraph 4(b)(ii)).
3.2 The Respondent registered the Domain Names to disrupt the Complainant’s business (Policy, paragraph 4(b)(iii).
3.3 The look and feel of the Respondent’s websites, including the use of full screen Seiko promotional photographs and the misleading description of the Respondent as an “official Seiko dealer”, will mislead consumers into assuming that the Respondent’s websites are among the Complainant’s official websites.
3.4 The Respondent has registered the Domain Names primarily for the purpose of confusing the public into believing that they are visiting the Complainant’s websites. The Respondent has done this for commercial gain (Policy, paragraph 4(b)(iv)).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Issue – Sending the Written Notice of the Complaint to the Panama Address
On the available record the Panel was not satisfied that it could be said that the Respondent had received “actual notice” of the Complaint on or about April 20, 2012.1 In those circumstances, notification of the Complaint could not be regarded as having been completed until May 14, 2012, when the Center provided the Written Notice of the Complaint by hard copy addressed to the Respondent’s Panama address. In this Panel’s view, it was only then that the proceeding “commenced” (Rules, paragraph 4(c)), and the period of 20 days for filing a Response began to run (Rules, paragraph 5(a)).
Of course the Respondent has had far more than 20 days since May 14, 2012 to file a Response, and it has not done so. However, it seemed to the Panel that it was at least possible that the Respondent may have been deterred from taking any step within the 20 day period, by the terms of the Center’s letter dated May 14, 2012 or by the notification of the Respondent’s default on May 21, 2012 (when only 7 days of the Response period had elapsed).
With those considerations in mind, the Panel noted the following in Administrative Panel Procedural Order No. 1, which was sent to both parties’ relevant email addresses:
“In the foregoing circumstances, the Panel has in mind allowing the Respondent a further period of 14 days to submit any Response. With the 6 days already allowed in the Center’s letter to the Respondent dated May 14, 2012, that would ensure that the Respondent would not be prejudiced in terms of its entitlement to a full period of 20 days within which to file a Response.”
The Respondent did not seek to be heard on this issue, and it has not filed a Response. A period of 68 days has now elapsed since notification of the Complaint was sent (apparently successfully) to the Respondent’s email addresses as advised to the Center by Internet.bs Corp. 44 days have elapsed since notification of the Complaint was completed on May 14, 2012 by the attempted delivery of the Written Notice of the Complaint to the Respondent’s Panama address, and 14 days have elapsed since the Panel indicated a preliminary view that the Respondent should have a further period of 14 days within which to file any Response.
In the circumstances just described the Panel is satisfied that any possible prejudice to the Respondent arising out of the Center’s May 14, 2012 letter, or out of the subsequent notification of the Respondent’s default, has been well and truly “cured”, and that the Respondent has been give a fair opportunity to present its case.
B. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
C. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint.
It is the registered proprietor of the mark SEIKO in numerous jurisdictions around the world, and it therefore has “rights” in that mark for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant’s SEIKO mark has been incorporated in its entirety, and is recognizable as the Complainant’s mark, within each of the Domain Names, and that has normally been regarded by WIPO UDRP panels as sufficient for a finding of confusing similarity under paragraph 4(a) of the Policy, at least where only common descriptive or dictionary terms have been added to the mark (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 1.2)
In this case, the Respondent has added to the Complainant’s SEIKO mark only the descriptive or generic expressions “ladies”, “watches”, and “uk”. Particularly in circumstances where the Complainant’s principal commercial activity is the selling of watches (including ladies’ watches), the added terms are clearly not sufficient to dispel the confusion which is likely to be caused by the inclusion of the Complainant’s mark in the Domain Names.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, each of the Domain Names is confusingly similar to the Complainant’s SEIKO mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or otherwise. There is nothing to suggest that the Respondent (or any business or other organization run by it) is commonly known by any of the Domain Names, and therefore nothing to support a claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy. The websites to which the Domain Names have been pointed are commercial in nature, so there can be no question of legitimate noncommercial use without intent for commercial gain, such as might have provided a basis for a right or legitimate interest under paragraph 4(c)(iii) of the Policy.
The websites at the Domain Names do raise the question of whether the Respondent might have a right or legitimate interest in one or more of the Domain Names, as a genuine reseller of the Complainant’s watches.2 However one of the principal requirements of that kind of right or legitimate interest is that the respondent’s website must accurately and prominently disclose the respondent’s relationship with the (complainant) trademark holder. That has not been done in this case – there is no disclaimer of any relationship with the Complainant posted on any of the websites at the Domain Names; indeed, those websites appear to have been developed with the express purpose of creating the false impression that the Respondent is an “official”, and impliedly authorized, reseller of the Complainant’s Seiko watches (see for example the statement “We are an official SEIKO watches company …” on the website at “www.seikouk.com”, the prominent use of the SEIKO mark on the websites, and the unauthorized use of promotional photographs, the copyright in which is owned by a member of the Complainant’s group of companies). The Respondent has been operating under false colors, and that is enough to remove any possibility that it might have a right or legitimate interest in the Domain Names as a genuine reseller of the Complainant’s watches.
In the Panel’s view, the foregoing combination of circumstances provides sufficient prima facie proof that the Respondent has no relevant rights or legitimate interests in the Domain Names, so the evidential burden shifts to the Respondent to come forward with evidence or submissions demonstrating that it does have some right or legitimate interest in the Domain Names. The Respondent has not filed any Response, and has therefore failed to discharge that evidential burden. In those circumstances, the Complainant’s prima facie proof must prevail, and the Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of any of the Domain Names.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
“(i) circumstances indicating that [a respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant has also proved this part of the Complaint. The Respondent was quite obviously well aware of the Complainant and its Seiko watches when the Domain Names were registered, and there is little room for doubt that it chose the Domain Names with the intention of using the Complainant’s goodwill in its well-known mark to lure Internet users to the websites at the Domain Names. It did that by incorporating the Complainant’s mark in full in each of the Domain Names, adding only generic or descriptive expressions (including the word “watches” in two of the Domain Names). It then “dressed up” the websites at the Domain Names to make it appear that they were official websites of the Complainant, or at least authorized or approved by the Complainant.
The Complainant’s evidence raises a question as to whether the Respondents are actually selling Seiko watches at the websites at the Domain Names at all, or whether the websites are scam websites of some sort, designed to obtain prospective purchasers’ personal details for unknown nefarious purposes. There is insufficient evidence to make any finding on that question, and it is unnecessary to do so. That is because the circumstances fall squarely within paragraph 4(b)(iv) of the Policy – by using the Domain Names, the Respondent has intentionally attempted to attract Internet users to the websites at the Domain Names, by creating a likelihood of confusion with the Complainant’s SEIKO mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. In the absence of any Response and under the circumstances of the present case, the Panel can only conclude that the Respondent has probably done that for commercial gain, whether through the sale of Seiko watches (if such sales are occurring), or (if no such sales are occurring) through some scheme or schemes designed to provide a commercial return sufficient to justify the time and cost of registering the Domain Names and establishing fake websites at them.
Accordingly, the Panel finds that the Domain Names have been registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <ladiesseikowatches.com>, <seikouk.com>, and <ukseikowatches.com>, be transferred to the Complainant.
Dated: June 28, 2012
“Nor could the fact that some of the other notification steps prescribed in paragraph 2(a) of the Rules were not shown to have failed, elevate the performance of those steps to the status of proof that the Respondent had actual notice of the Complaint. A respondent might no longer be using an email address to which a notification has been sent, and people sometimes change physical addresses, just as they sometimes no longer check old email addresses. Sometimes individuals with no authority to receive documents on behalf of a corporation are the people with whom the relevant documents are left.
It might be said that it is entirely the fault of the respondent if the WhoIs particulars for a disputed domain name are not kept up-to-date. That may be so, but the structure of paragraph 2(a) of the Rules is such that the respondent is only deemed to have notice of a complaint when all of the steps prescribed at paragraph 2(a)(i), (ii) and (iii) of the Rules have been taken by the Provider. In the absence of evidence of actual notice (such as submission of a Response) or clear indicia that the Respondent is in actual possession of the Complaint, apparently successful completion of only some of the prescribed steps is not enough.”
In this case, the Panel notes that the Center had worked through the notification steps prescribed at paragraphs 2(a)(i), (ii) and (iii) of the Rules. One of those steps required the sending of Written Notice of the Complaint to all postal-mail and facsimile addresses for the Respondent. The Center transmitted the Written Notice to a Bahamas address for the Respondent which had appeared in the WhoIs database for the Domain Names, but did not transmit it to the Respondent’s Panama address later notified to the Center by Internet.bs Corp.
“Normally a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark.” (citing, among other cases, Oki Data Americas Inc. v ASD, Inc, WIPO Case No. D2001-0903).