WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OMRON Corporation v. Max Deng
Case No. D2011-1072
1. The Parties
The Complainant is OMRON Corporation of Kyoto, Japan, represented by Sanderson & Co. of the United Kingdom.
The Respondent is Max Deng of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <omron.mobi> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2011. On June 23, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On 24 June 2011, Moniker Online Services, LLC 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 July 5, 2011 providing the registrant information disclosed by the Registrar, and requesting confirmation of the registrant name by return email. The Complainant confirmation was as follows:
We confirm that we have received the indication of the name and the address of the Respondent from Moniker. The name of the respondent now appears to be Max Deng – although that was shown on the original Whois entry. Max Deng shall be treated as Respondent from now on. Please let me know if a revised complaint needs to be filed.”
On June 24, 2011, the Center received an email from the Respondent where it was indicated that the Respondent was willing to reach a settlement on the dispute and subsequently on July 6, 2011, the Center received an email from the Respondent where it was indicated that the Respondent was willing to transfer the disputed domain name to the Complainant. No suspension request was received from the Complainant in this regard. 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 July 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2011. The Response was filed with the Center on August 17, 2011.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on August 29, 2011. 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 following summary sets out the factual submissions made by the Complainant:
4.1 The Complainant is a Japanese electronics company based in Kyoto, established by one Kazuma Tateishi in 1933 and incorporated in 1948. Its main business is the manufacture and sale of automation components, equipment and systems, but it is also known for producing precision medical equipment such as digital thermometers, blood pressure monitors and nebulizers. The Complainant is also well regarded for having developed and created the world’s first electronic ticket gate, designed to relieve congestion at ticket gates in train stations especially during peak or rush hours with heavy passenger traffic. This invention was named as an IEEE Milestone in 2007.
4.2 The Omron Group has an international presence, and has operations not only in Japan, but also in North, South and Central America, Europe, Africa, the Asia Pacific region and China. As such, the Omron Group is widely regarded as a leader in the electronics market.
4.3 As at March 31, 2011, the Omron Group employs 35,684 people globally. Its total sales for the year ending 2010 were 617 billion Yen (about USD 7.695 billion).
4.4 The Complainant has registered various trademarks comprising OMRON in respect of its goods and services on a worldwide basis, including the following trademarks:
Community Trademark Registration No. 000216721 registered on January 7, 1999
Community Trademark Registration No. 009142837 registered on November 12, 2010
United States Trademark Registration No. 3774983 registered 26 January 2010
United States Trademark Registration No. 0984928 registered on 28 May 1974
United States Trademark Registration No. 3204195 registered on 30 January 2007
Japan Trademark Registration No. 250471 registered on 26 February 1993
Japan Trademark Registration No. 0622187 registered on 29 July 1963
Japan Trademark Registration No. 1742268 registered on 23 January 1985
4.5 The OMRON trademark has been extensively used by the Complainant in respect of the goods and services covered by these registrations.
5. Parties’ Contentions
5.1 The Complainant contends that it has rights to the OMRON trademark and that the disputed domain name is identical or confusingly similar to the Complainant’s OMRON trademark.
5.2 The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain since the Respondent:
5.2.1 is not licensed to use the Complainant’s trademarks, nor is the Respondent associated with either the Complainant or the Complainant’s parent, affiliate or subsidiary companies;
5.2.2 has neither trademark registrations for OMRON nor any of its variants;
5.2.3 has not been commonly known by the name OMRON; and
5.2.4 is using the disputed domain name to resolve to a holding page that contains links and advertisements which offer or which appear to offer goods and services. The domain name is also offered for sale, and there are links to other sites where the offers to purchase the disputed domain name can be made.
5.3 To establish bad faith registration and use of the disputed domain name, the Complainant contends as follows:
5.3.1 the Respondent intentionally attempts (and continues to attempt) to use the reputation of the Complainant so that Internet users will be misled and lured to websites neither owned nor authorized by the Complainant;
5.3.2 the Respondent is blocking the Complainant from registering or using the disputed domain and is, thus, interrupting the business of the Complainant by directing potential customers to competitors or by falsely making those customers believe that there is an association between the Respondent and the Complainant, when there is in fact none;
5.3.3 the Respondent intentionally attempts to attract members of the public who have an interest in purchasing or obtaining additional information about OMRON goods and services, before forwarding them to other websites not affiliated to or controlled by the Complainant. Forwarding via the links to other websites results in unjustly enriching benefits or otherwise to the Respondent;
5.3.4 searches made for information about <premiumnames.mobi> found that it may be an organization owning many domain names including “.mobi” extensions (such as <hiker.mobi>, <midis.mobi>, <fishlabs.mobi>, <c-v.mobi>, <packard.mobi>, <westpoint.mobi>, <warner.mobi>, <trojan.mobi>, <spyder.mobi>, <babelfish.mobi>, <piaggio.mobi>, <lucent.mobi>, <armani.mobi> among others). The variety of domain names owned, many of which comprise the well-known trademarks of third parties, suggests that the Respondent’s company specializes in domain name reselling and thus holding brand owners to ransom;
5.3.5 the commercial gain which the Respondent potentially stands to obtain from the misuse of the reputation or goodwill of a brand owner or from restricting the legitimate use thereof demonstrates a clear pattern of bad faith behaviour.
5.4 The Respondent contends that since:
5.4.1 the registrant is based in China, where it alleges the Complainant’s mark is not famous, the Complainant has no exclusive rights to own the OMRON trademark;
5.4.2 the website that resolves from the disputed domain name has “no business” with the business of the Omron Corporation; and
5.4.3 the Respondent has no intent for commercial gain or misleadingly to divert OMRON trademarks, businesses, or advertisements,
it has the rights or legitimate interests in the disputed domain name.
5.5 The Respondent contends further that since:
5.5.1 the Respondent’s main purpose “is to build commercial websites on dotMobi domains and establish mobile websites step by step”;
5.5.2 any party can contact the Respondent for “website building”;
5.5.3 the Complainant owns <omron.com> and thus the Complainant is not prevented from undertaking business; and
5.5.4 the Complainant owns <omron.org> and <omron.net> but “puts no usage” on these websites, it is therefore the Complainant who wishes to “hijack” the Respondent’s disputed domain name,
its registration and use of the disputed domain name is not in bad faith.
6. Discussion and Findings
To succeed in its complaint, the Complainant must establish the following limbs of paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
6.1 The Panel is satisfied that the evidence adduced by the Complainant to establish its rights to the trademark OMRON. The Panel notes that the disputed domain name wholly comprises the trademark OMRON, in which the Complainant has rights.
6.2 The Panel is also satisfied that the “.mobi” identifier is a generic top level domain identifier and may be ignored based on established principles, and the Panel cites with agreement the decision in Omron Corporation v Mas i Canas SCP, WIPO Case No. D2011-1069 which held that “it is well established that the addition of a generic top level domain identifier (gtld) such as “info” is not taken into account when determining whether a disputed domain name is identical or confusingly similar to a trademark. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s trademark, and that the first element of paragraph 4(a) of the Policy is readily proven.”
6.3 As such, the Panel deems the disputed domain name identical to the Complainant’s OMRON trademark, within the definition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
6.4 The Complainant has forcefully asserted that it has not licensed or authorized the Respondent to use its mark in any domain name, including the disputed domain name which this Panel finds identical to the Complainant’s mark.
6.5 The Respondent’s contends that “if a trademark is not famous in a registrant country, there is no means that the TM owner has exclusive right to own it”. The Panel finds this contention misconceived under the Policy. In Mercer Human Resource Consulting, Ltd., Mercer Human Resource Consulting Inc. v. Konstantinos Zournas, WIPO Case No. D2007-1425 it was held that “there are many UDRP decisions where a trademark registered or made well known in one country or area has been found to be registered in bad faith by a domain name registrant residing in another country”. Thus, the fame or the lack thereof of the Complainant’s trademark is not a determinant factor in determining whether the Respondent has a right or legitimate interest to use the disputed domain name.
6.6 Paragraph 4(c)(i) of the Policy provides that a respondent may demonstrate rights to and legitimate interests in the domain name before any notice of the dispute by use, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Once the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests, the burden then shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. In this case, the Panel is not convinced of the arguments put forward by the Respondent to establish such rights or legitimate interests.
6.7 Based on records filed in this proceeding, the Respondent has also not provided any evidence of use of the disputed domain name in connection with a bona fide offering of goods or services before or after notice of the dispute. The available correspondence between the Respondent and the Complainant merely demonstrate the bare denials of the Respondent that it harboured any intention to deprive the Complainant of its business. This is contrary to the records which indicate that the Respondent had offered the disputed domain name for sale to third parties, and there is no evidence to suggest that the disputed domain name was used in conjunction with any bona fide offering of goods or services. Therefore, the Respondent fails to meet the shifted burden of proof under paragraph 4(c)(i) of the Policy. See Inter-Continental Hotels Corporation v. Khaled Ali Sousi, WIPO Case No. D2000-0252 and Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020.
6.8 The records also do not indicate whether the Respondent is known by the name Omron.
6.9 The Panel is therefore satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
6.10 Evidence filed in this proceeding indicates that the Respondent is using the disputed domain name with the intention to attract Internet users for commercial gain through the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s website contains links to web pages that contain sponsored advertisement banners and to various websites. It is very likely that these sponsored banners and links enable the Respondent to earn a commission whenever an Internet user visits the website and clicks on one of the sponsored links. There have been several decisions on this issue where the Panel has found that such conduct amounts to bad faith. (see Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556, Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387, Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, Scania CV AB (Publ) v. Unaci, Inc. WIPO Case No. D2005-0585, Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911, Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383).
6.11 The Respondent has suggested that since the Complainant owns several other domain names with the mark OMRON which it does not utilize, the disputed domain name puts the Complainant to no loss. This Panel finds that this contention does not lend any support to the Respondent’s arguments to negate a finding of bad faith. Whether or not the Complainant has registered other domain names that comprise its trademark and whether such registrations (if any) have been actively used by the Complainant is not a factor which this Panel ought to take into account in considering whether the Respondent has registered and used the disputed domain name in bad faith. There could be many reasons why the Complainant decided not to activate its other domain name registrations. The question of whether or not the Complainant suffers any loss simply because it has many other domain name registrations is also beyond the scope of these proceeding. The focus of this proceeding is on the actions of the Respondent in registering and using the disputed domain name and whether they constitute bad faith.
6.12 In the circumstances, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
D. Respondent’s Unilateral Consent to Transfer
6.13 The Panel notes that paragraph 10 of the Rules permits a Panel to proceed immediately to make an order for transfer without determination of the elements in paragraph 4(a) of the Policy. See Williams-Sonoma Inc. v EZ-Port, WIPO Case No. D2000-0207, in circumstances where the panel believes it is appropriate and where both parties agree.
6.14 The Panel further notes that while the Respondent requests the Panel to deny the remedies sought by the Complainant in its Response, the Respondent previously also consented to transfer the disputed domain name to the Complainant. The Complainant did not request for the suspension of the proceedings and can therefore be deemed not to have agreed to the Respondent’s exercise of its consent to transfer. Faced with these conflicting positions, the Panel had decided as foregoing to decide on the merits of the Complaint, given that there was a formal Response by the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <omron.mobi> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: September 12, 2011