WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aozora Bank, Ltd. v. Hirofumi Nishioka
Case No. D2012-1221
1. The Parties
The Complainant is Aozora Bank, Ltd. of Chiyoda-ku, Tokyo, Japan, represented by Abe, Ikubo & Katayama, Japan.
The Respondent is Hirofumi Nishioka of Nagoya, Aichi, Japan.
2. The Domain Name and Registrar
The disputed domain name <aozorabank.com> is registered with Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2012. On June 15, 2012, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On June 16, 2012, Dynadot, 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 June 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2012.
The Center appointed Keiji Kondo as the sole panelist in this matter on July 19, 2012. 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 is Aozora Bank, Ltd.
The Complainant was established in 1957 as the Nippon Fudosan Bank in accordance with the Long-Term Credit Bank Act. It changed its name to the Nippon Credit Bank in 1977. In 1998, it once failed in business, and was brought under government control. Subsequently, an enterprise association consisting of Softbank and other companies bought the Complainant’s stocks, and in September 2000, with the end of the government control, the Complainant started its operations as a new private bank. The Complainant changed its name to the current name Aozora Bank in January 2001. In April 2006, it was converted into an ordinary bank from a long-term credit bank.
Today, the Complainant is listed on the first section on the Tokyo Stock Exchange. Other than its head office located in Tokyo, the Complainant has 18 branches (excluding the Internet Branch) all over Japan, and 2 representative offices overseas (New York, United States of America and Shanghai, China).
The Complainant has the following Japanese trademarks:
1. AOZORA BANK in Roman alphabet, registration number 4554393, registered on March 22, 2002; and
2. AOZORA GINKO which combines “Aozora” written in hiragana (Japanese syllabary characters) and “Ginko” that means “bank” in Japanese in Chinese characters, registration number 4554392, registered on March 22, 2002.
Other than the above, the Complainant also owns many other trademarks that bear “Aozora” written in hiragana, along with three trademarks with “AOZORA” or “Aozora” in English, and two with “Ao-Zora” written in katakana (a set of Japanese syllabary characters different from hiragana) as the name of the elephant the Complainant uses as its character. The Complainant owns the registered trademarks AOZORA BANK in the United States of America and AOZORA BANK in China.
The disputed domain name was created on November 13, 2002.
5. Parties’ Contentions
(1) Notability of the Complainant’s Trademarks
As explained below, the Complainant’s trademarks AOZORA BANK as well as AOZORA GINKO written in Japanese were very well-known before the disputed domain name <aozorabank.com> was registered on November 13, 2002.
1. The news that the Complainant, in September 2000, got out of the government control and would start its operation as a private bank was frequently reported by the media such as newspapers and TV news, and the change of its name attracted public attention.
2. Over the period between 2000 and 2002, the Complainant spent a total of about 3.3 billion yen on advertising in order to appealing and spreading its new name “Aozora Bank” throughout Japan. For example, the Complainant placed in Japan’s three major national newspapers an advertisement which occupied one-third of a page and displayed the Complainant’s trademark consisting of its corporate logo and the letters “Aozora” largely in the center of the space on January 4, 2001.
3. National newspapers, financial journals, and magazines had covered the Complainant many times from its new start to the time the disputed domain name was registered. Articles ranking or comparing banks almost always mention the Complainant as one of the major banks in Japan. For example, January 4, 2002 issue of the Nikkei Financial Daily Newspaper published “Popularity Ranking of Financial Institutions,” which ranked the Complainant 18th among all banks in Japan.
4. In March and June 2002, the media reported that Softbank was planning to sell their shares in the Complainant. National and local newspaper headlines showed “Aozora Bank Shares” when they covered the news.
(2) Identical or Confusingly Similar to a Trademark or Service Mark
1. The disputed domain name <aozorabank.com>, excluded the “.com” suffix, is identical to the trademark AOZORA BANK.
2. The trademark AOZORA GINKO in Japanese has the same pronunciation as the portion “aozora” in “aozorabank,” and “Ginko” means “bank”. Therefore, the trademark and the disputed domain name evoke the same notion. Hence, the disputed domain name is confusingly similar to the trademark.
3. The Complainant has used “www.aozorabank.co.jp” as the URL for its website since 2001, and owns many other domain names that contain the character string “aozoarabank.” The description and pronunciation of the essential part “aozorabank” of these domain names is identical to the disputed domain name.
(3) Rights or Legitimate Interests in Respect of the Disputed Domain Name
The Respondent did not have at the time of registration and has not subsequently acquired any rights or legitimate interests in the disputed domain name. This is supported by the following:
1. The trademarks AOZORA BANK and AOZORA GINKO in Japanese were well-known in Japan. Therefore, it can be reasonably inferred that the Respondent, who has an address in Japan and is obviously a Japanese individual judging from his name “Hirofumi Nishioka”, must have known the Complainant’s trademarks when he obtained the disputed domain name.
2. “Aozora” in the Complainant’s trademark AOZORA BANK means “blue sky” in Japanese, and one would not easily associate a blue sky with a bank, considering a bank’s operations and images the public is likely to have of banking business. Thus, it is unlikely that one would select “Aozora” for a name of a bank.
3. To the best of the Complainant’s knowledge, there has not been an organization or individual that performs business operations or personal activities under the name of “aozorabank”, or any other name of similar kinds, other than the Complainant. The Respondent, judging from his name, is an individual rather than a business entity, and it is unlikely that he performs business operations using “aozorabank” or any other names of similar kinds. Obviously, the Complainant has never given the Respondent consent to use “aozorabank” or any other names of similar kinds.
4. The website under the disputed domain name <aozorabank.com> only lists links under “Related Searches” and “Sponsored Listings” (clicking the link “Company”, for instance, does not display the corporate information and only leads to a page showing different links). The fact that the Respondent has created only this simple website showing nothing but a list of links shows clearly that he does not use the disputed domain name in a just and legitimate manner.
5. The website under the disputed domain name lists words that bear “Bank” and other financial terms, such as Bank Checks, Bank Foreclosures, Bank Investment, Bank Account, My Bank, Bank Fee and Bank to Bank Wire Transfer, coupled with a photograph of many cards, which can mislead the viewer into assuming that the web page is part of the Complainant’s website.
6. The links on the same website include ones to “Shinsei Bank Housing Loans” and to “Hotels in Kyoto.” This clearly shows that the Respondent intends to mislead consumers into confusing the Complainant’s business operations with different entities’ operations.
(4) Bad Faith
The Respondent registered and has been using the disputed domain name in bad faith. This is supported by the following:
1. The Complainant’s trademarks were already well-known in Japan when the disputed domain name was registered.
2. The word “Aozora” could not have been easily associated with banking business and chosen for a name of a bank.
3. The Complainant had already obtained and used domain names containing the string of characters “aozorabank” at the time of the registration of the disputed domain name.
4. The Respondent has obviously intended to mislead consumers into confusing the Complainant’s business operations with different entities’ operations.
5. The Respondent, who is an individual and not a business entity, owns as more than 1,200 other domain names. In addition, an Internet search by <namesplaza.com> contained in the email address “[ ]@namesplaza.com” provided by the Respondent to the Registrar leads to a website titled “Domain shop Namesplaza” that lists several domain names under “domain for sale!!”.
6. It is not difficult to imagine that such a large-sized bank as the Complainant that has overseas representative offices and is likely to expand its business abroad may want to obtain a domain name with “.com”, a generic Top-Level Domain (“gTLD”).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel has found that the Complainant has trademark rights in AOZORA BANK under the Japanese Trademark Registration No. 4554393, and AOZORA GINKO which combines “Aozora” written in hiragana and “Ginko” meaning “bank” in Japanese in Chinese characters under the Japanese Trademark Registration No. 4554392. The Panel has also found that the Complainant’s trademarks AOZORA BANK and AOZORA GINKO in Japanese were trademarks widely recognized by business entities as well as the public and consumers as the Complainant’s corporate symbols before the disputed domain name was registered on November 13, 2002.
It is well-established that domain name suffixes, in this case “.com”, are disregarded for the purpose of comparison. The disputed domain name includes “aozorabank,” which consists of the two parts “aozora” and “bank”. Connecting the two distinctive parts of “Aozora” and “Bank” and changing the capital letters to lower-case letters does not dispel the confusing similarity between the disputed domain name <aozorabank.com> and the trademark AOZORA BANK. The Panel finds that the disputed domain name is therefore confusingly similar to the Complainant’s trademark AOZORA BANK.
“Aozora Ginko” in Japanese has the same pronunciation as the portion “aozora” in “aozorabank”. It is prevalently acknowledged that “Ginko” means “bank” at least in Japan. Accordingly, the disputed domain name and the trademark raise the same notion at least in Japan. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark AOZORA GINKO in Japanese.
The Panel concludes that the disputed domain name is confusingly similar to the trademarks AOZORA BANK and AOZORA GINKO in Japanese in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of a respondent’s rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, a domain name in connection with a bona fide offering of goods or services;
(ii) the fact that a respondent has commonly been known by a domain name; and
(iii) legitimate noncommercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.
A complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the respondent to rebut the presumption of absence of rights or legitimate interests.
As its own investigation, the Panel has visited the website at “www.aozorabank.com” and found that it displays a heading “Aozora Bank” but only lists links “Related Searches” and “Sponsored Listings”. The links under “Related Searches” lead to some websites which have no relation with the Complainant’s business, for example, “Seven Bank International Money Transfer Service”, and “Shinsei Bank Group Loan Service”. These banks can be the Complainant’s competitors in finance business field. Next, the link under “Sponsored Listings”, for example “Company”, does not display the corporate information and only leads to a page showing different internal links.
It is inconceivable to the Panel that the Complainant has given consent to the Respondent for him to use the disputed domain name, which is confusingly similar to the Complainant’s trademark rights, in the website that has no relation with the Complainant’s business, but, instead, leads to the websites of the Complainant’s potential competitors. Therefore, the Panel concludes that the Respondent acquired and has used the disputed domain name without any consent of the Complainant.
As to paragraph 4(c)(i) of the Policy, the website under the disputed domain name has a head “Aozora Bank”, and carries some pictures of cards that appear to be related to the financial services of the Complainant. However, as mentioned above, the links on the website leads to pages of either other banking institutions’ services or different internal links. Therefore, the Panel finds that the Respondent does not operate any finance business under the disputed domain name. In addition, the website lists links which have no relation to financial business. For example, the link “Akb 48 blog catalog” on the website leads to a page which, under a head “peeplo,” lists links that feature Japanese popular show businesspeople. This page obviously has no connection with the image imagined by the disputed domain name <aozorabank.com>. Under the circumstances, the Panel concludes that the Respondent is not in any way engaged in, or preparing for, a bona fide offering of goods or services using the disputed domain name.
The Respondent is an individual known as “Hirofumi Nishioka” and there is no similarity to the disputed domain name. Therefore, it is inconceivable that the Respondent has a nickname that is similar to the disputed domain name. Accordingly, paragraphs 4(c)(ii) does not apply.
As argued by the Complainant, “aozora” means “blue sky” in Japanese. The Panel also notes that “bank” sometimes refers to a collection of things; for example, a “Word-bank” could be a dictionary-like product. Therefore, there could be a noncommercial fair use if the disputed domain name were used for a website showing a collection of poems, pictures or the like representing blue sky. However, as mentioned above, it is not the case here. Accordingly, the Panel finds that paragraph 4(c)(iii) does not apply, either.
The Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Panel finds that the Complainant’s trademarks AOZORA BANK and AOZORA GINKO in Japanese had been trademarks widely recognized as the Complainant’s corporate symbols before the disputed domain name was registered. The disputed domain name suggests some connection with the Complainant’s services known by the name of its trademarks. Nevertheless, the Respondent has failed to submit any Response to establish its connection to the Complainant. The disputed domain name consists of the two parts “aozora” and “bank”. The word “aozora” could not have been easily associated with banking business. The Panel infers from these that the Respondent registered the disputed domain name with the Complainant’s trademarks AOZORA BANK and AOZORA GINKO in Japanese in mind. Indeed, the Respondent has not come forward to suggest otherwise.
The Respondent has registered, under his name and his registered email address “[ ]@namesplaza.com”, over 1,200 domain names. In addition, the website at “www.namesplaza.com” which is a part of the Respondent’s registered address “[ ]@namesplaza.com”, leads to a page which displays “Domain shop Namesplaza Hirofumi Nishioka Nagoya. Aichi. Japan”. This page also displays “domain for sale!!” and lists some domain names such as <lusal.com> and <loterijen.com>. For example, clicking “www.lusal.com” leads to a website which displays a heading “Lusal” and lists links under “Related Searches” and “Sponsored Listings”. This is the same composition as the website under the disputed domain name. Therefore, the Panel concludes that the Respondent has acquired over 1,200 domain names for the purpose of selling the domain name registration. The Panel also concludes that the Respondent has been engaged in a pattern of such conduct.
It is obvious that the Complainant which operates its business widely wants to acquire the disputed domain name. In fact, the Complainant has acquired the domain names <aozorabank.co.jp>, <aozorabank.jp>, and <aozorabank.net>. The fact that under the circumstances the Respondent acquired the disputed domain name is enough for the Panel to find that the Respondent has an intension to sell the disputed domain name to the Complainant or its competitor for valuable consideration in excess of the Respondent’s out-of-pocket costs.
The Panel also notes that the website under the disputed domain name is so designed as to cause the visitors at least for a moment to believe that it is a website operated by the Complainant. Therefore, it is obvious that the Respondent, by using the disputed domain name, has intentionally attempted to attract Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site. The mechanism how the Respondent acquires commercial gain from the confusion is not apparent, but the Panel finds the number of visitors itself gives the Respondent some commercial gain.
For the reasons discussed above, the Panel concludes that the disputed domain name was registered and has been used 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 disputed domain name <aozorabank.com> be transferred to the Complainant.
Date: July 25, 2012