WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Bic Camera v. Netline Systems
Case No. D2002-0817
1. The Parties
1.1 The Complainant in this administrative proceeding is Kabushiki Kaisha Bic Camera, Tokyo, Japan.
1.2 The Respondent is Netline Systems, Manila, Philippines.
2. The Domain Name and Registrar
The Domain Name in dispute is <biccamera.com>, which is registered with BulkRegister.com.
3. Procedural History
3.1. Complaint was submitted to the WIPO Arbitration and Mediation Center (the "Center") on August 30, 2002, by email and on September 4, 2002, five hard copies were received by the Center.
3.2. An acknowledgement of the receipt of the Complaint by email was sent to the Complainant on August 30, 2002.
3.3. A request for Registrar Verification was sent to the Registrar BulkRegistrar.com Inc. on August 30, 2002, requesting it to, inter alia, confirm that a copy of the complaint had been received by them; confirm that the domain name in issue is registered with them; etc. The Registrarís confirmation letter was received by the Center on September 3, 2002.
3.4. On September 4, 2002, the Center was satisfied with the formal requirements of the Policy, the Rules for the Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel independently agrees with the assessment of the Center in this regard. The Complainant also paid on time and in the required amount the fees for a single Panelist.
3.5. No formal deficiencies having being recorded, on September 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Registrar and ICANN), setting a deadline of September 26, 2002, by which time the Respondent could file a Response to the Complaint.
3.6. Having reviewed the communications records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent.
3.7. On October 2, 2002, not having received any response, the Center sent the parties a formal notification of the Respondentís default.
3.8. In view of the Complainant's designation of a single member panel, on October 18, 2002, the Center has appointed the undersigned to serve as the Sole Panelist. The Panel was required to forward its decision to the Center by November 1, 2002.
4. Factual Background
4.1. "The Complainant is a major mass retailer of electric appliances in Japan, founded in 1978, with a capital of 470 million yen. The annual sale of the fiscal year 2001, is 250.6 billion yen. The total number of the employees is 1,460 as of the year 2002. The Complainant sells wide range of products such as cameras, office automation equipment, visual and audio communication equipment, electric home appliances, toys, watches, jewelrys, down quilts, alcoholic beverages, sporting equipment, gifts, and flowers. The Complainant also provides customer services including, but not limited to, developing photographs, repairing watches and electric appliances, and handling loans. The Complaint has large scale stores in six major cites of Japan, i.e., Tokyo, Yokohama, Takasaki, Osaka, Fukuoka and Sapporo, with nine stores in Tokyo, two in Yokohama and one each for the rest.
4.2. Among the stores, the Ikebukuro Main Store in Tokyo is located in the Ikebukuro area. That area has a total annual commercial sale of 733.4 billion yen. The Complainant's stores such as Ikebukuro Main Store, Yurakucho Store, Nanba Store, Sapporo Store, Ikebukuro Higashiguchi Store, Shibuya Higashiguchi Store and Shibuya Hachikoguchi Store are used by many foreign customers as well. In these stores, the floor guides have been prepared in English, Korean, and Chinese languages, in addition to Japanese since as early as the year 1999. Also, foreign money exchange counters have been available in Ikebukuro Main Store, Yurakucho Store, Shibuya Higashiguchi Store, Tachikawa Store, Yokohama Nishiguchi Store, Nanba Store, Sapporo Store and Shinjuku Higashiguchi Store ever since the new foreign exchange law took effect in April 1998.
4.3. According to the survey published in the July 19, 2001, edition of the "Nikkei Marketing Journal", one of the most authoritative newspapers specializing in marketing, the Complainant was ranked third in the "ranking of ordinary profit per 3.3 square meters" in the category of specialty stores having selling floor space of more than 10,000 square meters. Also, as to the "ranking of sales classified by business" in the same paper, the Complainant was ranked second in the category of "trading of cameras". Further, according to the "ranking of sales classified by business" in the year of 2001, published in another authoritative source, "Toyo Keizai Data Bank 2001 Japanese Companies 79,000" the Complainant was ranked fifth in the category of retail of household electric equipment. Furthermore, according to the survey titled "the 14th Nikkei Corporate Image Survey" conducted by Nihon Keizai Shimbun, Inc. (known as Nikkei), one of the most popular business-oriented daily papers in Japan, the Complainant was ranked first in the ranking of "the most vibrant corporation" in the eyes of Japanese business people. According to the newspaper article, the Complainant's approachable TV commercials and its strategy to open large-scale stores one after another at the lots once occupied by failing department stores contributed greatly to this result. Also, the Complainant is ranked third in the ranking of "the most vibrant corporation" in the eyes of the individuals. According to the December 1, 2001, edition of the "Nikkei Marketing Journal", a survey was conducted in Ginza and Yurakucho areas of Tokyo on November 21, 2001, as to whether they have used the low price-oriented mass merchandisers, such as Bic Camera, Sofmap, Mujirushi-Ryohin, and Diei. As a result, 44 respondents answered that they have used the Complainant's store. The Complaint was the top-vote getter among the four. The Complainant has a very favorable reputation and corporate image in Japan.
4.4. The Complainant is the proprietor of 18 registrations in Japan of trademarks consisting of the words BIC CAMERA. Trademark registrations Nos. 3009461, 3013761, 3013764, 3020574, 3024348, 3059692, 3097003 and 3189370 relate to the mark "BIC CAMERA" Trademark Registrations Nos. 3002073, 3003713, 3003714, 3003859, 3005632, 3009462, 3082144, 3097002 and 3149152 relate to the mark 'BICCAMERA in Japanese Katakana characters'. 'Katakana characters', one of the three types of Japanese characters, are phonograms which are used mainly to represent foreign words by transliterating them. Thus, the English word BIC CAMERA is pronounced almost in the same way as BICCAMERA in Katakana characters is pronounced. The Complainant has been using both of the above English marks and Katakana marks extensively in Japan. Since Katakana is more generally accepted by Japanese consumers, the Complainant mainly uses the BICCAMERA in Katakana for the big signboard of the store buildings, in advertisement and sales promotional materials and sales slips. However, the Complainant also uses "BIC" (in stylized form) on the signboards of some stores, and uses BIC CAMERA on wrapping papers, floor guides for foreign customers, employee's uniforms as well as on the internet.
4.5. The Complainant is also known by its abbreviated name "BIC" or its Japanese counterpart. Some of the Complainant's group companies' names start with BIC or its Japanese counterpart, such as Bic P kan, Bic Sport, Bic Contact, Bic Toys, Bic Staff, Bic Pasoconland and Bicbic.com. The term BIC or its Japanese counterpart is used as the title of its magazine, i.e., "Bic Press" as well.
4.6. The Complainant's name BIC CAMERA is an invented word consisting of a well-known abbreviation of the Complainant's name BIC and one of their main goods CAMERA. As English is the most familiar foreign language to Japanese people, considering the facts that the English terms, "bic" and "camera", are simple and easy to be recognized by Japanese people and that the English version and the Japanese version are pronounced as almost identically, it is reasonable to assume that Japanese people can easily equate the English version with the Japanese version.
4.7. The Complainant is the registrant of the following domain names: <biccamera.co.jp>; <bicbic.com>; and <bicpkan.com>. The web site at <biccamera.co.jp> mainly offers general information and electronic customer services in connection with the business of the Complainant as well as its group companies. The web site at <bicbic.com> is mainly an online shopping site for the Complainant as well as for its group company Bic P kan, which is specialized in the sale of computer related products. The web site at <bicpkan.com> offers various information relating to the Bic P kan. The access counts of each of these sites are, according to the Complainant, 180,098 times per day and 5,402, 920 times per months for <biccamera.co.jp>; 2,171,410 times per day and 65,142,300 times per month for <bicbic.com>; and 85,471 times per day and 2,572,230 times per months for <bicpkan.com>.
4.8. The Complainant has been one of the sponsors of a very popular TV economic news program which has been broadcasted from 23:00 to 23:50 between Monday and Friday, covering almost all over Japan since the year 1998. The Complainant's TV commercial is aired for 60 seconds every time. Further, the Complainant has solely sponsored a 10 hour-TV drama about Japanese historical figures, aired between 14:00 and 23:55 p.m. on January 2, 2002. The Complainant frequently runs TV or radio commercials that can be seen in the complainant's web site <biccamera.co.jp> as well. Also, the Complainant actively places advertisements on various newspapers as well as gives out advertisement leaflets. The Complainant was one of the special sponsors of the greatest annual festivals in Tokyo called "Tokyo Millenario", which was held between December 24, 2001 and January 1, 2002. This festival attracted the total of more than roughly 2 million people during the whole period. In the advertisement, the Complaint's name both in English and Katakana characters were used.
4.9. The Complainant instructed an intellectual property law counsel in the Philippines to conduct trademark searches to determine whether the Respondent has registered or filed trademark applications for BIC CAMERA in the Philippines. According to the results of the search, it has turned out that there is no pending application nor issued registration for the trademark NETLINE SYSTEMS or BIC CAMERA in the Philippines. The Complainant also conducted trademark searches using the internet homepage of Intellectual Property Office of the Philippines. Further, the Complainant conducted trademark searches using the internet homepages of the United States Patent and Trademark Office, OHIM, Australia and Canada. However, the Complainant found no registration or application for the trademark NETLINE SYSTEMS or BIC CAMERA The Complainant tried several times in vain to reach any site using the domain name <biccamera.com>. The Complainant found that the Respondent has registered at least the following three domain names, incorporating famous trademarks or trade names of Japanese household electric appliance retailers:
- <joshin.com> which was registered on September 13, 1998;
- <sakuraya.com> which was registered on February 21, 2000; and
- <ishimaru.com> which was registered on March 3, 2000
"Joshin" is an essential part of the company name, Joshin Denki Co., Ltd. (hereinafter referred to as JOSHIN), located in Osaka, Japan, a mass-retailer of electric appliances having 178 stores in Japan and one store in Taiwan. "Denki" here means electric appliances. Its URL is "http://www.joshin.co.jp". Sakuraya" is an essential part of the company name of Kabushiki Kaisha Sakuraya (hereinafter referred to as SAKURAYA), located in Tokyo, Japan, a mass-retailer of electric appliances having seven stores in and around Tokyo. Its URL is "http://www.sakuraya.co.jp". "Ishimaru" is an essential part of the company name of Ishimaru Denki Kabushiki Kaisha (hereinafter referred to as ISHIMARU), located in Tokyo, Japan, a mass retailer of electric appliances having 24 stores in and around Tokyo. Its URL is "http://www.ishimaru.co.jp".
4.10. The Complainant sent a letter to the Respondent to the address indicated in the "administrative contact" of the WHOIS registration data on November 19, 2001, in order to get in contact with the Respondent for arranging the transfer of the domain name <biccamera.com>. On the same date, the Complainant also transmitted an e-mail attaching the file containing the electronic data of the letter to the e-mail address of the Respondent as given in the same WHOIS registration data. Although the Complainant requested a response from the Respondent by November 30, 2001, the Respondent did not reply to the letter or the e-mail up to this date. So far, the Complainant has not received any returned mail or returned e-mail.
Without having received any response from the Respondent, the Complainant instructed the same counsel in the Philippines to conduct investigations on the Respondent based on the registration information available on the above WHOIS registration data.
According to the investigations, the Complainant found the following facts:
(1) There is no registered entity by the name of Netline Systems under the records of the Securities and Exchange Commission (SEC) of the Republic of the Philippines. In addition, there is no registered entity by the name of Bic Camera Co., Ltd. under the records of the SEC. In the Philippines, all legal entities purporting to be corporations or partnerships are required by law to register with SEC. A SEC registration is one of the basic requirements for a corporation or partnership in obtaining a license to operate in the Philippines.
(2) The search showed that no entity has registered the business name of Netline Systems. The investigator checked the records of the Bureau of Domestic Trade (BDT) of the Republic of the Philippines to determine if Netline Systems has obtained a business name registration. Under the law, all individuals intending to do business in the Philippines must register its business name with the BDT. Absence a registration with the BDT is a strong indication that no entity, either a corporation, partnership or individual (single proprietorship) is doing business using the business name Netline Systems.
(3) The investigator checked all the directories of PLDT (Philippine Long Distance Telephone Co.), the biggest telephone company in the Philippines. The directories reviewed include all the categories for Government & Business, Household & Business, Commercial & Industrial listings. However, the investigator did not find any phone listing for Netline Systems.
(4) The investigator located the address of 4537, Casino St. This address shows a big apartment complex. The Suite indicated was closed during the site investigation. However, it was apparent that the entity named as Netline Systems was not doing business at this address."
4.11. The Complainant is not aware of any use of the domain name <biccamera.com> by the Respondent. The Complainant had not licensed or otherwise permitted the Respondent to use the impugned domain name in any manner whatsoever.
5. Parties conditions.
A. The Complainant has raised the following contentions:
Identical or Confusing Similarity
5.1. The domain name <biccamera.com >, registered in the name of the Respondent, uses the word or name "BICCAMERA" and is identical or confusingly similar to the Complainantís Trademarks in which the Complainant has rights. The contested domain name <biccamera.com> is identical in pronunciation to the Complainant's trademarks and trade name BICCAMERA in Katakana characters.
Rights/ Legitimate interest
5.2. The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of this complaint. The Respondent has not used, or made 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.
5.3. The Respondent has actively tried to conceal identity, as it has not replied to any correspondence, which was addressed to the administrative address in the WHOIS registration data. The Respondent has also tried to conceal his identity by not conducting any business at the address mentioned in the WHOIS registration data
5.4. The Respondent has been passively holding the website for the last two years. All attempts to visit the website "www.biccamera.com" have failed.
B. The Respondent has not filed any response in these proceedings.
6. Discussion and findings
Paragraph 4(a) of the Policy requires the Complainant to prove the following:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
Each of these requirements will be dealt with separately.
A. Complainantís trademark rights; identical/confusing similarity
6.1. The Respondent has registered the domain name <biccamera.com>, which is a registered trademark of the Complainant. The Complainant has also proven with sufficient documents that the trademark has become distinctive to the Complainantís goods/ services. The Complainant has also furnished news reports and documents to prove its reputation in the industry. Use of the mark BICCAMERA as a domain name by the Respondent will cause confusion as the Complainant has registered trademarks and also owns the domain name <biccamera.co.jp> and the use of the impugned domain name will only lead to confusion as it is deceptively similar to the Complainants domain name and registered trademarks.
B. Rights/Legitimate Interests
6.2. Paragraph 4(c) of the Policy enumerates circumstances which, if found by the panel to be proved will demonstrate the Respondentís rights or legitimate interests to the domain name.
6.3. The Respondent has not filed a Response and the contentions of the Complaint have not been met. In the absence of a Response, the panel is inclined to believe that the Respondent has no rights or legitimate interest in the domain name. Further, the Respondent has not activated the website and has a passive holding of the impugned domain name. In fact, the evidence indicates an overwhelming reputation in the trademark BICCAMERA and the panel is doubtful of the existence of a legitimate interest in this name in favour of a third party.
C. Bad Faith
6.4. Paragraph 4(b) of the Policy enumerates certain illustrative circumstances which, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
6.5. As stated in several earlier panel decisions, this paragraph is merely illustrative and the panel may rely on other factors in arriving at a determination that the domain name has been registered and is being used in bad faith. The panel finds that the following circumstances amply reveal that the domain name has been registered and is being used in bad faith:
(i) The passive holding of the domain name by the Respondent constitutes use of the domain name in bad faith because (i) the Complainantís name is an invented and coined mark that has a strong worldwide reputation, (ii) there is no evidence of any actual or contemplated good faith use by the Respondent of the domain name, and (iii) it is impossible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
(ii) Further the Respondent has hidden its identity by not replying to the letter sent by the Complainant asking them to transfer the domain name and also by not being available at the address listed as the administrative address in the WHOIS Registration data.
For all of the foregoing reasons, the Panel decides that the domain name registered by the Respondent is identical and confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the domain name be transferred to the Complainant.
Dated: October 29, 2002