WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

John Hutton International v. Whois Privacy Protection Service by Value Domain / Axelight co.,Ltd., Yasutaka Sakatani

Case No. D2015-0318

1. The Parties

The Complainant is John Hutton International of New York, United States of America, represented by Cabinet Singh, France.

The Respondent is Whois Privacy Protection Service by Value Domain of Osaka, Japan / Axelight co.,Ltd., Yasutaka Sakatani of Kyoto, Japan.

2. The Domain Name and Registrar

The disputed domain name <ensemblelondon.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2015. On February 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2015, the Registrar transmitted by email to the Center its verification response 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 March 2, 2015 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 March 16, 2015.

On March 2, 2015, the Center notified the parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On March 16, 2015, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.

The Center verified that the Complaint and 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 March 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2015. On March 2, 2015, the Center received an email communication from the Respondent. The Respondent did not however submit any formal response. Accordingly, the Center notified the Respondent’s default on April 8, 2015.

The Center appointed Douglas Clark as the sole panelist in this matter on April 17, 2015. 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 designer and manufacturer of high end furniture. The Complainant is the registered proprietor of the community trade mark ENSEMBLE LONDON .

The disputed domain name was owned by the Complainant until three days before it was registered by the Respoondent. The Complainant had attempted to pay for renewal of the disputed domain name but due to communications problems involving the registrar and the Complainant’s ISP it was allowed to lapse.

The disputed domain name <ensemblelondon.com> was registered by the Respondent on August 23, 2014. The website to which the disputed domain name has a number of pages with articles in Japanese providing information on skin care. No products appear to be advertised on the website.

The Complainant did try to renew the disputed domain name in January 2015 but was unable to as it had already been registered by the Respondent.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant argues that the disputed domain name <ensemblelondon.com> is made entirely up of the registered trademark ENSEMBLE LONDON to which the generic Top-Level Domain (“gTLD”) “.com” has been added. The disputed domain name is therefore confusingly similar to the Complainant’s registered trademark ENSEMBLE LONDON. The Complainant further argues that as the former owner of the disputed domain name <ensemblelondon.com> it has rights in the disputed domain name that, is by definition, identical.

No rights or legitimate interests

The Complainant submits that the Respondent has not been known by the disputed domain name and has made no preparation to do business under the disputed domain name. Further, the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registration for ENSEMBLE LONDON.

Registered and used in bad faith

The Complainant submits that given the Respondent registered the disputed domain name only 3 days after it had expired, there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the ENSEMBLE LONDON trademark and registered the disputed domain name to attract business to its website. As such, its registration and use is in bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. In an email dated March 2, 2015, the Respondent wrote in English “This domain is not currently one of our own. After transfer of ownership, seems whois has not been changed”.

6. Discussion and Findings

6.1. Language of Proceedings

The language of the Registration Agreement is in Japanese. Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Japanese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The Complainant requested the language of the proceeding to be English on grounds that the disputed domain name was registered in English and was written in the English alphabet and that the company names were written in English.

The Respondent did not respond to this request.

The final determination of the language of the proceeding lies with this Panel. The grounds put forward by the Complainant were not particularly compelling. Nevertheless, the Respondent did respond in an English email showing that it understood the nature of the proceedings and stating the disputed domain name did not belong to it.

The Respondent subsequently did not respond to the Center’s preliminary language determination (which was sent in Japanese and English). This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.”

The Panel accepts that translating the Complaint would cause unnecessary delay in this matter.

These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only substantive pleading before the Panel is in English, the Panel will render its decision in English.

6.2. Substantive Decision

A. Identical or Confusingly Similar

The disputed domain name <ensemblelondon.com> is made up of the registered trademark ENSEMBLE LONDON and the gTLD “.com”. The disputed domain name is other than the gTLD identical to the Complainant’s registered trademark.

The first part of the paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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 the 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.”

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

As the Respondent has not sought to assert any rights or legitimate interests in the disputed domain name, nor can the Panel ascertain any such rights or legitimate interests from the content of the website under the disputed domain name, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name.

The second part of the paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

The key question in this case is whether or not the registration of the disputed domain name soon after it expired was in bad faith.

The question of whether the registration of a disputed domain name that has recently expired constitutes registration and use in bad faith has been considered in a number of UDRP decisions. In some cases, transfers have been ordered in other cases not. The cases the panel has considered are:

1. 2Advanced Studios LLC v. Dreamrack, Inc. WIPO Case No. D2003-0923 concerning the domain name <2advanced.org>. In this case the complaint was denied on the basis there was no evidence the registration was in bad faith. However, the panel specifically stated this finding without prejudice to the complainant bringing a new case if evidence of bad faith was uncovered.

2. Eli Lilly and Company v. Domain Magic, LLC, WIPO Case No. D2007-0144 concerning the domain name <pulmotilac.com>. The panel ordered a transfer on the basis of the complainant’s registered mark PULMOTIL AC. The panel found the registration of the expired domain name to be in bad faith. In this case, the disputed domain name was for a relatively distinctive trade mark and even if the domain name had not expired the complainant would have likely succeeded.

3. Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc. WIPO Case No. D2008-0321 concerning the domain name <internationalwineaccessories.com>. The majority denied the complaint on the basis that the domain name was descriptive and the respondent had provided an explanation of why it registered the domain name (albeit not entirely satisfactorily) meaning that the registration was not proven to be in bad faith. The dissenting panelist held that there was a duty on the purchaser of an expired domain name to check if they were encroaching on others rights.

4. Cerulean Studios, LLC v. Hexuan Cai, WIPO Case No. D2013-0902 concerning the domain name <trillan.com>. The complainant had a registration for TRILLAN as a trade mark in the United States of America (“US”) for computer software and instant messaging service. The respondent said it used TRILLAN as a trade mark in China for agricultural products. The respondent argued that the complainant had not trade mark rights in China and it should be free to use the domain name outside the US in relation to different products or services. On the basis the respondent had not shown any real steps to use the disputed domain name in commerce (it was only being used a click-through revenue portal), the panel found the registration of the recently expired domain name to be registration and use in bad faith and ordered a transfer.

5. Intagent LLC v. Dominor LLC, WIPO Case No. D2008-1878 concerning the domain name <intagent.net>. The panel ordered a transfer. The respondent in this case stated that it had purchased the domain name to take advantage of its Google rank. The panel considered this in itself to be evidence of bad faith because it showed the respondent knew the goodwill attached to the domain name. The domain name was ordered to be transferred.

6. Delia Ephron v. Value Domain, Inc., WIPO Case No. D2011-1789, concerning the domain name <deliaephron.com>. The panel in that case (which is the Panel in this case) decided that the registration of personal name that is both well known and relatively rare soon after the domain name had expired without any explanation is sufficient evidence of both registration and use in bad faith.

7. EasyGroup Limited v. Domain Administrator, Whois Watchdog, WIPO Case No. D2014-1787 concerning the domain name <easytrain.com>. The panel ordered a transfer on the basis the EasyGroup was well known and the respondent must known of the registrant when applying for the domain name.

Some of the above cases which were determined in favour of the complainants would almost certainly have been decided in their favour even if the respondent had not acquired a recently expired domain name.

However, in other cases, the fact that the complainant had until recently been the holder of the domain name was clearly a relevant, if not determinative, factor to the decision. The prior registration gave the complainant both standing and rights and legitimate interests to assert. Nevertheless, where a domain name is descriptive or generic or there is evidence the respondent is making legitimate use of the domain name, transfers have been refused.

This case falls into the category where the fact that the complainant had recently been the holder of the domain name is relevant. “Ensemble London” is made up of the dictionary word “ensemble” that could legitimately be used by others. London is a geographical description. The Complainant has a registered trade mark for ENSEMBLE LONDON in the European Community.

In this case, the Respondent does not appear to have made any legitimate use of the disputed domain name. It currently resolves to a page that provides information about skin care in Japanese. There is no apparent reason for this. Nothing on the page relates to the words “Ensemble” or “London”. No products are being promoted on the page. The page is effectively a parking page.

On this basis, the Panel finds that the disputed domain name was registered and is being used in bad faith. When acquiring the disputed domain name soon after it expired it could have done a simple search to ascertain if the former registration had rights or interests in the disputed domain name. The Respondent has not itself used the disputed domain name to indicate it purchased it for a good faith purpose. The fact it resolves to what is effectively a parking page is passive use and has been found to be bad faith use in many cases (See the WIPO Overview 2.0, Paragaph 3.2).

The third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 <ensemblelondon.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: April 27, 2015