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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orix Kabushiki Kaisha dba Orix Corporation v. Privacy Protect, LLC (PrivacyProtect.org) / Chinedu Agu

Case No. D2017-2529

1. The Parties

Complainant is Orix Kabushiki Kaisha dba Orix Corporation of Tokyo, Japan, represented by Smart & Biggar, Canada.

Respondent is Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America (“United States”) / Chinedu Agu of Lagos, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <orixcorporation.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2017. On December 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2017, 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 Complainant on December 27, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed its first amended Complaint on January 2, 2018 and its second amended Complaint on January 4, 2018.

The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 26, 2018.

The Center appointed John C. McElwaine as the sole panelist in this matter on February 5, 2018. 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

Complainant, Orix Corporation, is an international financial services group headquartered in Japan. Complainant is the owner of multiple trademark registrations for the mark ORIX throughout the world including, by way of example, in the United States, Australia, European Union, as well as international trademarks. Among others, Complainant is the owner of the United States trademark registration for ORIX, with registration number 1559228 registered on October 3, 1989.

Respondent registered the Domain Name with the Registrar on October 6, 2017. The Domain Name does not resolve to a functioning webpage.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is a large multinational company operating in a diverse range of industries around the globe. Complainant further asserts that the company changed its name to Orix Corporation almost three decades ago in 1989. Since its founding, Complainant has established a number of wholly owned subsidiary companies under the Orix brand, including, Orix Auto Corporation (specializing in automobile leasing, rental, car sharing and sales of used automobiles), Orix Real Estate Corporation (specializing in real estate development, rental and facilities operation); and Orix Life Insurance Corporation (specializing in life insurance), and Orix Baseball Club Co. Ltd. (specializing in the management of a professional baseball team in the Nipon Professional Baseball League). Complainant claims that it employs 34,835 individuals across 2,129 locations in 36 countries worldwide. In 2017 alone, Complainant alleges that it had total revenues of greater than JPY 2.6 Trillion (which is roughly equivalent to USD 23 Billion).

Complainant alleges to have registered trademark rights in the mark ORIX and common law trademark rights in the mark ORIX CORPORATION. Specifically, Complainant alleges that it is the owner of the following registered trademarks in the United States, Australia, European Union, as well as international trademarks:

(i) ORIX – United States Trademark Registration No. 1559228 in association with various financial services, filed August 25, 1988 and registered October 3, 1989.

(ii) ORIX Design – United States Trademark Registration No. 3223192 in association with a number of services, filed June 15, 2004 and registered March 27, 2007.

(iii) ORIX – Australia Trademark Registration No. 1528014 in association with a number of services, filed November 27, 2012 and registered November 27, 2012.

(iv) ORIX Design – Australia Trademark Registration No. 1071625 in association with a number of services, filed June 15, 2004 and registered June 15, 2004.

(v) ORIX Design – European Union Trademark Registration No. 003250206 in association with a number of services, filed July 8, 2003 and registered April 15, 2009.

(vi) ORIX Design – International Trademark Registration No. 854905 in association with a number of services, basic registration in Japan filed November 30, 2001 and registered March 20, 2003.

Complainant also alleges to have a significant presence on the internet and is the owner of several domain names which contain the term “Orix”, including: <orix.co.jp> (registered May 8, 1996), <orix.co.uk> (registered October 30, 1997), <orix.biz> (registered March 27, 2002), <orix.asia> (registered January 22, 2008), <orix.finance>. Complainant’s wholly owned subsidiary, ORIX USA Corporation, owns the domain name <orix.com> (registered November 21, 1996).

With respect to the first element of the Policy, Complainant contends that the Domain Name is identical to its common law trademark, ORIX Corporation. Further, Complainant contends that the Domain Name is confusingly similar to its registered trademark rights in the mark ORIX as the generic term “corporation” does not reduce a likelihood of confusion.

With respect to the second element of the Policy, Complainant points out that ORIX is a coined term and has no descriptive or generic meaning. Therefore, Complainant asserts that the only conceivable explanation for the registration of the Domain Name is to take unfair advantage of the trademark rights of Complainant. In addition, Complainant asserts that there is no evidence that Respondent has been commonly known by the Domain Name and Respondent is neither in any way associated with Complainant nor authorized to use the trademark ORIX. With respect to Paragraph 4(c)(iii) of the Policy, Complainant contends that there is no evidence that Respondent is making legitimate noncommercial use of the Domain Name because the Domain Name does not resolve to an active website.

With respect to the third element of the Policy, Complainant alleges that ORIX is a well-known trademark and is not an otherwise meaningful word. Therefore, Complainant asserts that Respondent must have had knowledge of the common law trademark ORIX CORPORATION and the registered trademark ORIX.

In addition Complainant asserts that a reverse WhoIs search of Respondent Chinedu Agu, reveals at least five other domain names owned by this individual including at least three domain names which incorporate trademarks from well-known financial institutions such as CIBC, FIDELITY NC, and UBS. Complainant alleges that this pattern of bad faith registration is evidence that Respondent has registered the Domain Name in bad faith in order to prevent Complainant from reflecting its trademark and trade name in a corresponding domain name. Lastly, Complainant asserts that the Domain Name is being passively held in bad faith because Complainant has a well-known trademark, no response to the complaint has been filed, and Respondent Chinedu Agu, attempted to hide his identity.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has provided evidence that it is the owner of several trademark registrations for ORIX and that since 1989 Complainant has used the trade name ORIX Corporation. The Panel finds that Complainant owns valid trademark rights in the ORIX and ORIX CORPORATION marks.

The Domain Name is identical to Complainant’s ORIX CORPORATION mark. With respect to Complainant’s registered trademark rights in the mark ORIX, it is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. Respondent’s use of the word “corporation” after the mark ORIX does not serve to distinguish the Domain Name from Complainant’s registered ORIX mark.

The Panel finds that Complainant has met its burden of showing that the Domain Name is identical or confusingly similar to the ORIX and ORIX CORPORATION marks in which Complainant has valid trademark rights.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Names. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.

Here, Complainant asserts that (i) Respondent is not associated with Complainant and Respondent is not authorized to use the ORIX or ORIX CORPORATION marks; (ii) Respondent has never been commonly known as “Orix”; (iii) Respondent is not making any legitimate noncommercial use of the Domain Name; and (iv) ORIX is a coined term, and as such Respondent does not have any rights or legitimate interests in the Domain Name.

Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the Domain Name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to a complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.

Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to the respondent of the dispute, the respondent’s 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 acquired no trademark or service mark rights; or (iii) 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. The Panel finds that Respondent will not be able to show rights or legitimate interests under any of the three conditions.

First, Respondent is not making any use, let alone bona fide use, of the Domain Name under paragraph 4(c)(i). When Respondent registered the Domain Name, Complainant had established rights in the ORIX and ORIX CORPORATION marks. Second, as discussed above, Respondent is not known by the coined name “Orix”. Instead, the Domain Name resolves to an inactive webpage. Passive holding of a disputed domain name incorporating a third-party, well-known mark does not normally amount to a bona fide use. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242.

Accordingly, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under Paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Complainant contends that Respondent registered and is using the Domain Name in bad faith as evidenced by (i) the fact that ORIX is a coined term with no descriptive meaning and Respondent must have intentionally selected the Domain Name to trade off of Complainant’s trademark; (ii) Respondent is not actually using or is passively holding the Domain Name; (iii) Respondent concealed its identity when registering the Domain Name; and (iv) Respondent has engaged in a pattern of cybersquatting.

Bad faith registration can be found where a respondent knew or should have known of a complainant’s trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s ORIX and ORIX CORPORATION marks, when it decided to register the Domain Name. There is no explanation or evidence of rights or legitimate interests to justify Respondent’s choice to register a domain name containing the ORIX mark and identical to the ORIX CORPORATION mark other than to trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.

The fact that the Domain Name does not resolve to a website and is being passively held does not obviate a finding of bad faith. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3, which instructs that panelists should examine the totality of the circumstances in each case of passive holding and that the following factors that have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. Id.

Complainant has established that it has used the mark for close to three decades and that it has significant revenues earned from offices in 36 countries. Complainant’s ORIX mark is distinctive, strong and widely known throughout the world. Moreover, Complainant’s ORIX mark is coined and does not have any generic or descriptive meaning and the Domain Name is also not susceptible to be used in a good faith generic or descriptive sense. In addition, Complainant has established Respondent has a pattern of registering domain names which incorporate other well-known financial services brands. It is simply inconceivable that Respondent coincidentally selected the Domain Name without any knowledge of Complainant and its ORIX and ORIX CORPORATION marks. See, e.g., Arkema France v. Steve Co., Stave Co Ltd., WIPO Case No. D2017-1632. Respondent did not respond to the Complaint and has provided no evidence of its intended use of the Domain Name. In fact, Respondent is not using the Domain Name in any manner to demonstrate a bona fide use or potential use.

Based upon the foregoing, the Panel finds that Respondent’s passive holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name was registered and is being used in bad faith by Respondent.

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 Domain Name <orixcorporation.com> be transferred to Complainant.

John C. McElwaine
Sole Panelist
Date: February 20, 2018

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