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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Maeda Seisakusho (DBA Maeda Seisakusho Co., Ltd) v. Hans Lempka, Alpha Domains/ Domain Administrator

Case No. D2014-1778

1. The Parties

The Complainant is Kabushiki Kaisha Maeda Seisakusho (DBA Maeda Seisakusho Co., Ltd), Shinonoi, Nagano-City, Nagano-Pref., Japan, represented by Domain and Intellectual Property Consultants, Dipcon AB, Sweden.

The Respondent is Hans Lempka, Greater London, United Kingdom of Great Britain and Northern Ireland, Alpha Domains/ Domain Administrator, Alpha Domains of Phoenix, Arizona, United States.

2. The Domain Name and Registrar

The disputed domain name <maedacranes.com> is registered with NameSilo, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2014. On October 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2014, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 17, 2014.

The Center verified that the amended 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 October 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2014.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 25, 2014. 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 a Japanese manufacturer of industrial cranes. Since 1962, the Complainant has distributed its products to countries around the world. All of the cranes sold by the Complainant are branded and promoted under the MAEDA and MAEDA MINI CRANES Trademarks. The Complainant owns trademark registrations for these trademarks, including the following:

- CTM Registration No. 005110887 for MAEDA (filing dated 2006-06-01)

- International Registration No. 1138864 for MAEDA MINI CRANES (Registration date 2012-10-09)

The Complainant also owns and operates a website at "www.maedaminicranes.co.uk".

The Registrant registered the disputed domain name <maedacranes.com> on July 8, 2014. At the time the Complaint was filed, the disputed domain name reverted to a website which provides links to third party websites.

5. Parties' Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant submits that it owns trademark registrations for the trademarks MAEDA and MAEDA MINI CRANES, including the Registrations set out in paragraph 4 above.

The Complainant contends that the disputed domain name <maedacranes.com> is confusingly similar to the Complainant's registered trademarks MAEDA and MAEDA MINI CRANES. The addition of the term "cranes" does not distinguish the disputed domain name from the Complainant's MAEDA trademark, and the deletion of the word "mini" does not distinguish the disputed domain name from the Complainant's MAEDA MINI CRANES trademark.

Rights and Legitimate interests

The Complainant contends that the Respondent was never authorized or licensed to use the Complainant's MAEDA and MAEDA MINI CRANES trademarks. The Respondent is not commonly known by the MAEDA name. The Complainant submits that the use of a confusingly similar trademark in association with a website that provides links to third party websites for the purposes of monetary gain does not demonstrate a bona fide offering of goods and services.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant's MAEDA trademarks. The Respondent registered and is using the disputed domain name to interfere with the Complainant's business and is attempting to trade on the goodwill of the Complainant. The Respondent is using the disputed domain name in association with a website that provides links to third party websites for purposes of monetary gain. The Respondent did not respond to the Complainant's cease and desist letter, and subsequently altered its email address to change its contact information.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant owns registered trademark rights in the MAEDA and MAEDA MINI CRANES trademarks by virtue of the trademark registrations listed in paragraph 4 above.

The Panel further finds that the disputed domain name <maedacranes.com> is confusingly similar to the Complainants' registered trademarks MAEDA and MAEDA MINI CRANES. The disputed domain name contains the dominant element the Complainants' trademark MAEDA, combined with the descriptive term "cranes". The addition of the descriptive term "cranes", which is also an element of Complainant's trademark MAEDA MINI CRANES, does not serve to distinguish the disputed domain name, rather it suggests the type of services or products provided.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds, on the evidence filed, that the Complainant's trademarks have a reputation worldwide, and as such the Respondent must have been aware of the Complainant's trademark rights in the MAEDA and MAEDA MINI CRANES trademarks. The Respondent was never authorized or licensed to use the Complainant's trademark. The disputed domain name reverts to a website that provides links to third party websites for purposes of monetary gain, and in the absence of any response, the Panel concludes that the Respondent does not hold any rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel concludes that due to the worldwide reputation of the MAEDA trademark and products, the Respondent must have been aware of the Complainant's trademarks when it registered and used the disputed domain name. The Respondent clearly intended to attract users to its website through the unauthorized use of the MAEDA and MAEDA MINI CRANES trademarks as the primary element of its domain name. The Respondent is using the disputed domain name in associated with a website which provides links to third party sites in what is commonly called a "click through site", for purposes of monetary gain. In the absence of any evidence to the contrary, the Panel finds that the disputed domain name was registered and used in bad faith.

The Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iIi) of the Policy.

7. Decision

For 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, <maedacranes.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: December 9, 2014

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