WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AOB KEIOH GROUP v. Etsuro Doi
Case No. D2013-0651
1. The Parties
The Complainant is AOB KEIOH GROUP of Yamanashi-ken, Japan, represented by Kumon Patent Office, Japan.
The Respondent is Etsuro Doi of Tokyo, Japan; self-represented.
2. The Domain Name and Registrar
The disputed domain name <arsoa.com> is registered with Melbourne IT Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2013. On April 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2013, the Registrar 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 April 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2013. On April 24, 2013, the Center received an informal communication from the Respondent. The formal Response was filed with the Center on April 25, 2013.
On May 8, 2013, the Center informed the parties by e-mail about the possibility to suspend the proceedings to explore a possible settlement between the parties. On May 9, 2013, the Complainant transmitted by e-mail to the Center a request to continue with proceedings and appoint the Panel.
The Center appointed Keiji Kondo as the sole panelist in this matter on May 17, 2013. 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.
An informal e-mail communication from the Respondent was received by the Center on June 7, 2013.
The Complainant opted for the English language to be used in these proceedings and the Respondent filed the Response with English words. Therefore, the Panel concludes that according to Rules paragraph 11(a) the language of the proceedings shall be English.
The Decision due date has been extended by the Panel, due to exceptional circumstances, until June 7, 2013. The extension has been duly informed to the parties
Meanwhile, the Respondent sent an e-mail to the Center on June 7, 2013. It reads: “At least, I have to mention that Mr. & Ms. Kumon are liars because that they have never contact to me and I have never discuss with them.” The Panel found that it was not timely. Nevertheless, the Panel considered it and concluded that it was anyway meritless.
4. Factual Background
The Complainant currently owns 15 trademark registrations in Japan for ARSOA ACADEMY word mark. The most senior registered trademark in Japan is registration number 3016334 registered in November 22, 1994.
The Complainant has the registrations for ARSOA trademark in 20 countries other than Japan.
With respect to domain names, the Complainant and its group companies have registered at least 29 domain names incorporating the ARSOA trademark, and have used them.
The disputed domain name was registered by the Respondent on March 14, 1999.
5. Parties’ Contentions
(1) Notability of the Complainant's Trademarks
The Complainant is the parent company of a corporate group holding Kabushiki Kaisha Arsoa Honsha, a renowned cosmetics corporation in Japan. The group companies manufacture and distribute mainly cosmetic products, and water, health foods and water purifiers also.
The cosmetics and other related products manufactured and distributed and the related services provided by the group companies of the Complainant are developed and provided to enrich and promote beauty and health of customers. The Complainant provides educational and technical support, such as the skin conditions of customers to pay attention to, the characteristics and the method of use of the cosmetic products and so forth, to the distributors and the sales personnel throughout Japan and worldwide and also provide information and services as necessary to the customers.
The Complainant has been manufacturing and distributing cosmetic products since 1972, when the Complainant was founded, and has been using the brand name "Arsoa" since 1992.
The Complainant's ARSOA trademark was published in the "Famous Trademarks in Japan”, published by the Japan Division of Association Internationale pour la Protection de la Propriété Intellectuelle.
(2) Confusingly similar or identical to the Complainant's Trademarks
The Complainant believes that the disputed domain name <arsoa.com> is confusingly similar or identical to the afore-mentioned registered trademark in which the Complainant has rights, as it incorporates the Complainant's highly distinctive ARSOA trademark in its entirety. It is highly probable that a website of any nature or kind using the domain name that is the subject of the Complaint is widely perceived by the general public as a website related to the products and services of the Complainant.
(3) Rights or Legitimate Interests in Respect of the disputed domain name
There is no positive or patent fact that the Respondent is well-known under the disputed domain name. There is no evidence that the Respondent has registered trademarks or service marks related to the domain name. Further, in the opinion of the Complainant, there is no lawful ground for the Respondent to choose the word "arsoa" for his domain name, and there is no ground for concluding that the Respondent did not copy the word but just chose the word by mere accident.
The Complainant presumes that the Respondent intended to ride on the goodwill and reputation of the Complainant by using the name "arsoa" for his own products and services.
The Complainant has been using the trade name "arsoa" since 1992 and believes that the Respondent deliberately chose and adopted the disputed domain name <arsoa.com>, because he knew the name "arsoa" at the time he registered the disputed domain name. It is because the Complainant devised and created the word "arsoa" from the French words "Arbre de soie”, meaning silk trees, whose flower language is "great joy", and currently has approximately 700 sales shops called "Arsoa Salon nemunoki (silk tree)" which distribute cosmetic products. ARSOA is a coined word with no dictionary meaning. The Respondent formerly alleged that he adopted the disputed domain name <arsoa.com> by extracting some portions from the phrase "Advanced Resort Agency". However, the way of extracting letters is unnatural, and it is difficult to presume that he chose the word for providing his own goods and services. To the contrary, the Complainant believes that the Respondent deliberately adopted the word “arsoa” to create an impression that the goods and services on the website come or originate from the Complainant.
(4) Bad Faith Registration and use of the disputed domain name
Considering the well-known trademark ARSOA, the sales shops of ARSOA cosmetic products throughout Japan, published articles, information available on the Internet and so forth, the Complainant believes that the Respondent knew, or should have known, of the ARSOA mark at the time of registration of the domain name that is the subject of the Complaint. Registration of a well-known trade mark as a domain name is a clear indication of bad faith in itself, even without considering other elements.
The disputed domain name <arsoa.com> was registered by the Respondent on March 14, 1999. Around 2001, the Complainant made an approach to request the assignment of the domain name. At that time, when you entered "http://www.arsoa.com", you were redirected to another website at "http://www.dtl.ne.jp/arsoa/arsoa_index.html", and on that website you found a message "Arsoa provides you with linking, maintenance and operation services for your corporate website quickly".
The website also provided such other messages as that the operator of the website invited new link partners and that "©2000 Kiyosato Net. All rights reserved." Kiyosato is the name of place in Kobuchisawa-cho, Hokuto-shi, where the headquarters of the Complainant is located.
As a result of the Internet search conducted by the Complainant, the office of the Respondent or any distributor or agent of the Respondent could not be found, and no evidence was found that demonstrates that the Respondent was using the disputed domain name in good faith for its own goods and services, or preparing for such use. Further, the Complainant has no relationship whatsoever with the Respondent, and has never authorized or licensed the Respondent to use the disputed domain name.
The Complainant made an inquiry with the Respondent for the origin or source of the disputed domain name, purpose of the website and so forth, but could not receive a clear and definite answer from the Respondent. Then, the Complainant offered to pay JPY 250,000, determined by taking into account the prevailing market price for assignment of domain name, for the assignment of the disputed domain name. However, the Respondent rejected the proposal, stating that "the damage (caused by the assignment of the domain name) I (the Respondent) might suffer could be significant, and the amount of the damages would not be in such amount as you (the Complainant) propose but millions (or tens of millions, depending on the case) of yen". This statement in itself shows the bad faith of the Respondent, considering the shallow content of the website.
Recently, when you try to access "www.arsoa.com", you are directly redirected to a website "http://cdselect.net/index.html", and "www.arsoa.com" does not function as a domain name for a website. Further, the redirected website is a shopping site for corrective foundation garment for women, and the name of the operator of such shopping site is C. Doi, which is the same as the name of the spouse of the Respondent, Mr. Etsuro Doi.
The Complainant has a corporate philosophy of "true health and happiness on the basis of harmonization with natural law" and the corrective foundation garment is against that philosophy. The Complainant is worried and upset that the sale of such corrective foundation garment under the disputed domain name of <arsoa.com> might invite misidentification or confusion that the Complainant manufactures and sells the corrective foundation garment. Further, such use of the disputed domain name could injure or compromise the ARSOA trademark by misleading the consumers. The Respondent started and now is operating the website for the purpose of commercial advertisement and sale, without legitimate authority or permission of the Complainant for the use of such domain name.
The Complainant contends that the act and intention of the Respondent are in bad faith. The Respondent deliberately and knowingly registered the disputed domain name <arsoa.com>, and intends to promote the sale of the corrective foundation garment by misleading the consumers to believe that the website is operated by the Complainant and the corrective foundation garment appearing on the website is manufactured and distributed by the Complainant or its associated company, which is the "free-ride" on the goodwill, reputation and brand of the ARSOA trademark.
(1) Whether the domain name is identical or similar to the Complainant's trademark
The disputed domain name is similar to the Complainant's trademark. However, the disputed domain name is not used for a business similar to the Complainant's.
(2) Whether the Respondent has rights or legitimate interests in respect of the disputed domain name
The disputed domain name <arsoa.com> was registered March 14, 1999. "Arsoa" stands for Advanced ReSOrt Area and Advanced ReSOrt Agency.
The disputed domain name was created for new resort-related business in "Kiyosato", where the second office of the Respondent has been located. "Kiyosato" is the Advanced ReSOrt Area and more famous than Kobuchizawa-cho in Japan.
"Kiyosato", mentioned in C.(2) by the Complainant, is located in Takane-cho, not located in Kobuchizawa-cho where the Complainant is located.
(3) Whether the domain name been registered and is being use in bad faith
Without any objection, the disputed domain name has been registered since March 14, 1999 by the Respondent. Around 2001, the Respondent was accepted the Complainant's offer to transfer the domain name in proper way.
That is why the Respondent has never tried to register other domains named "Arsoa" anymore. However, there has been no contact from the Complainant since then. It should be recognized that the Complainant has been without objection any more.
(4) Consent to Remedy
The Respondent consents to the remedy requested by the Complainant and agrees to transfer the disputed domain name on the basis of party agreement, without need for a decision being rendered by the Administrative Panel.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Respondent admits the disputed domain name is similar to the Complainant's trademark. In any event, the Panel finds that the disputed domain name <arsoa.com> is identical or confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has been using the brand name "Arsoa" since 1992. The Complainant's ARSOA trademark was published in the "Famous Trademarks in Japan”, published by the Japan Division of Association Internationale pour la Protection de la Propriété Intellectuelle (AIIPPI).
The disputed domain name was registered by the Respondent on March 14, 1999. The Respondent has no contractual or commercial relationship with the Complainant.
On the other hand, the Respondent alleges that "Arsoa" stands for “Advanced ReSOrt Area” and Advanced ReSOrt Agency, and that the disputed domain name is not used for businesses similar to the Complainant's.
In this particular case, in determining whether the Respondent has rights or legitimate interests in the disputed domain name, it is not relevant whether its business is similar to the Complainant’s. The key question for the Panel here is whether the Respondent coined the word “arsoa” independently, or without reference to the Complainant’s trademark.
To this Panel, the Respondent’s allegation that he coined the word as an abbreviation for “Advanced Resort Area” is not persuasive. The combination of letters for the claimed purpose is not an obvious one, and what the Respondent appears to be doing with the disputed domain name is, as later discussed, nothing to do with resort areas, regardless of whether they are “advanced” or not.
Accordingly, this Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name and therefore, the second condition of paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The Complainant has been mainly manufacturing and distributing cosmetic and health products. On the other hand, the Respondent recently uses the disputed domain name to directly redirect Internet users to a shopping site for corrective foundation garment for women. The shopping site is related to the Respondent’s spouse. It is conceivable that consumers that are interested in cosmetic products are also interested in corrective foundation garment for women even though the policy of the Complaint is against use of corrective foundation garment. Therefore, the panel finds that the Respondent attempts to mislead the consumers trying to visit the Complainant’s website to the shopping site for the corrective foundation garment.
In addition, around 2001, the Complainant offered to pay JPY 250,000, taking into account the prevailing market price for assignment of domain name, for the assignment of the domain name that is the subject of the Complaint. The Respondent rejected the proposal. In spite of little value of the Respondent's website with the disputed domain name at that time, the Respondent stated that "the damage (caused by the assignment of the domain name) I (the Respondent) might suffer could be significant, and the amount of the damages would not be in such amount as you (the Complainant) propose but millions (or tens of millions, depending on the case) of yen". The Panel does not find this to be a credible claim in the circumstances, but rather an attempt to further inflate or capitalize on trademark value by he Respondent.
To this Panel, the Respondent’s use of the disputed domain name, together with the counter proposal made by the Respondent indicates that the Respondent likely registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant, who is the owner of the ARSOA trademark or service mark, or to a competitor of the Complainant that might benefit from possible confusion with the Complainant, for valuable consideration in excess of the Respondent documented out-of-pocket costs directly related to the disputed domain name.
The Respondent alleges that there has been no contact from the Complainant since 2001, and it should be recognized that the Complainant has been without apparent objection since that time. However, that fact alone doesn’t give the Respondent rights or legitimate interests in the disputed domain name, nor does it change the Respondent’s bad faith to good faith.
Accordingly, this Panel concludes that the disputed domain name was registered and has been used in bad faith.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <arsoa.com> be transferred to the Complainant.
Date: June 14, 2013