WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Omron Corporation v. Nanjing Yingfa Electronic Technology Co., Ltd

Case No. DCC2011-0007

1. The Parties

The Complainant is Omron Corporation of Kyoto, Japan, represented by Sanderson & Co., the United Kingdom of Great Britain and Northern Ireland.

The Respondent is Nanjing Yingfa Electronic Technology Co., Ltd. of Nanjing, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <omron.cc> is registered with Web Commerce Communications Limited dba WebNic.cc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2011. On December 16, 2011, the Center transmitted by email to Web Commerce Communications Limited dba WebNic.cc a request for registrar verification in connection with the disputed domain name. On the same date, Web Commerce Communications Limited dba WebNic.cc 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 December 22, 2011. On December 22, 2011, the Center received an automatic-reply email from Respondent. On the same date, the Center acknowledged receipt of Respondent’s email communication. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2012.

The Center appointed Richard Tan as the sole panelist in this matter on January 20, 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 a corporation incorporated in Japan in 1948. Its main business is the manufacture and sale of automation components, equipment and systems, but it is generally known for medical equipment such as digital thermometers, blood pressure monitors and nebulizers.

The disputed domain name was registered on December 26, 2005. As of December 13, 2011, the disputed domain name did not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <omron.cc> is identical or confusingly similar to the OMRON trade mark in which it has rights.

The Complainant contends that, together with its affiliated companies, it has obtained registrations in many countries across the world for the OMRON trade mark used in conjunction with its various products and services and is a leader in the electronics market. It contends that it owns many registrations of the mark OMRON, including Community Trade Marks (in the European Union), Japan, United States of America (“USA”) and Australia. For example, the Complainant registered its mark in Japan as early as 1961, in Australia as early as 1963, and in the USA in 1981.

It has attached to its Complaint copies of extracts from various trade mark registers as evidence of the registrations. The Complainant further contends that it operates in Japan, the Americas (North, Central and South), Europe, Africa, Asia Pacific and Greater China. It developed and created the world's first electronic ticket gate, created to relieve congestion at ticket gates in train stations during rush hour. It contends that as of March 31, 2011, the OMRON group employed 35,684 people all over the world. Total sales for the year 2010 were JPY 617,825,000,000 (about USD 7,695,000,000).

The Complainant further contends that it owns many domain names such as <omron.com>, <omron.eu> and <omron.co.uk> and that the domain name <omron.com> has been in use for many years, long before the registration of the disputed domain name.

The Complainant contends that the ".cc "component in the disputed domain name is merely a generic country code top level domain identifier and may be ignored when making a comparison with its trade mark. It contends that the disputed domain name is in fact identical to the Complainant’s OMRON trade mark. It contends that the public would easily associate the disputed domain name with the Complainant's marks and be misled into believing that the disputed domain name is associated with the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent has not been licensed to use the Complainant's trade marks, nor is the Respondent in any way associated or affiliated with the Complainant or its group of companies.

Further, the Respondent has neither trade mark registrations for OMRON nor any variant thereof and has not been commonly known by the disputed domain name.

Further, the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The Respondent’s use of the disputed domain names is not a legitimate noncommercial or fair use of the trade mark.

By the use of the mark OMRON in the disputed domain name, the Respondent intentionally attempted (and continues to attempt) to benefit from the reputation of the Complainant. The Respondent is not using the disputed domain name for any bona fide purpose.

The Complainant contends that the Respondent's registration and use of the disputed domain name is in bad faith. It contends that the passive holding of a domain name can be treated as use in bad faith and relies on the well-known decision of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant contends that by its registration and use, the Respondent is blocking the Complainant from registering or using the disputed domain name and interrupting its business, and potentially misleading customers into believing that there is an association between the Respondent and the Complainant when there is none.

The Complainant contends that its investigations into the Respondent revealed a connection with a website “www.cninf.cn”, which contained a link to the disputed domain name. From that website, it appears that the Respondent appeared to be concerned with the design and manufacture of electronic components, and in the same field of business as the Complainant. The Complainant contends that this means that the Respondent would certainly have been well aware of the Complainant's significant earlier rights and demonstrates the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(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.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Policy further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences,” from a failure to comply with the Rules, “as it considers appropriate”. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, supra; and Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.

Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant has rights in the OMRON trade mark.

The Panel also accepts that the disputed domain name is confusingly similar to the Complainant’s OMRON mark.

The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

In this Panel’s view, this threshold test is clearly satisfied here. The disputed domain name reproduces the OMRON mark in its entirety. The addition of a country code top level domain such as “.cc” is not sufficient to escape a finding of substantial or confusing similarity.

This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trade mark in which the Complainant has established rights.

B. Rights or Legitimate Interests

As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The evidence is that the Respondent registered the disputed domain name on December 26, 2005, which was long after the Complainant began registering its trade marks around the world, which were registered, for example in Japan as early as 1961, in Australia as early as 1963, and in the USA in 1981. The evidence demonstrates that the Complainant registered its domain name <omron.com> long before the registration of the disputed domain name.

There is no evidence that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods or services.

There is also no evidence that the Respondent is, or has been, commonly known by the disputed domain name or that the disputed domain name is in any other way identified with, or related to, any rights or legitimate interests of the Respondent.

On the evidence, the Panel finds that the Complainant is in no way associated or affiliated with the Respondent nor is there any relationship between the Complainant and the Respondent that could give rise to any license, permission or any other right by which the Respondent could own or use any domain name incorporating the Complainant’s mark.

The Panel accepts the Complainant’s contentions that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent, namely, that it has no rights or legitimate interests in the disputed domain name. The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.

The Complainant submits that the Respondent registered the disputed domain name in bad faith. The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trade mark or a mark similar thereto.

The Respondent registered the disputed domain name well after the Complainant’s mark was first registered and the Complainant registered its domain names. Absent any response or evidence to the contrary, the Panel finds that the Respondent knew or should have known about the Complainant’s mark and business when registering the disputed domain name. Further, the Panel finds that it is highly improbable that given the distinctiveness and use of the OMRON mark, and the fact that the Respondent appears to have business interests in the same field as the Complainant, that the Respondent was unaware of the Complainant’s OMRON mark at the time of the registration of the disputed domain name. The Respondent’s choice of the disputed domain name which was so similar to the Complainant’s mark could only have been deliberate particularly in the absence of any conceivable legitimate reason for registering the disputed domain name.

The Complainant submits that the Respondent has registered the disputed domain name in bad faith as the Respondent has not made any use, or demonstrable preparations to use, the domain name in connection with the bona fide offering of goods or services, is not commonly known by the domain name, has no license or other authorisation to use the OMRON trade mark and is not making legitimate noncommercial or fair use of the name.

The lack of active use of the domain name does not prevent a finding of bad faith: see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel indeed finds that the failure to use a domain name, combined with other factors indicating that the domain name was registered in bad faith, amounts to use in bad faith.

The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant, the Panel finds that the Respondent’s failure to use the domain name and its passive holding of the same, combined with the other factors mentioned above, constitutes registration and use of the domain name in bad faith within the meaning of 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 <omron.cc> be transferred to the Complainant.

Richard Tan
Sole Panelist
Dated: February 3, 2012