WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyotomi Co., Ltd. v. Digital Domains MEPE
Case No. D2015-0710
1. The Parties
Complainant is Toyotomi Co., Ltd. of Mizuho-Ku, Nagoya, Japan, represented by Heuking Kühn Lüer Wojtek, Germany.
Respondent is Digital Domains MEPE of Glyka Nera, Attica, Greece, internally represented.
2. The Domain Name and Registrar
The disputed domain name <toyotomi.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2015. On April 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 21, 2015.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced April 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response May 14, 2015. The Response was filed with the Center May 14, 2015.
On May 19, 2015, the Center received a Supplemental Filing from Complainant. On May 21, 2015, the Center received a Supplemental Filing from Respondent. The Center acknowledged its receipt, and informed the parties that it would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it.
The Center appointed Nathalie Dreyfus, The Hon Neil Brown Q.C. and Clive Elliott Q.C. (presiding) as panelists in this matter on June 3, 2015. The Panel finds that it was properly constituted. Each member of 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
According to WhoIs the Domain Name was registered on April 3, 1998.
5. Parties’ Contentions
Complainant is a Japanese company focusing on the manufacturing and sale of portable kerosene heaters, water heaters, electrical heaters, room air conditioners, cooling equipment, dehumidifiers and air cleaners. It is the owner of a series of trade marks for the designation “Toyo-Tomi”, having been registered for more than 25 years in France, Germany and Japan, with its TOYOTOMI branded products being distributed widely in Japan, Germany and other European countries.
Complainant asserts that the Domain Name is identical to the trade marks in which it has rights as the Domain Name incorporates Complainant’s trade mark TOYOTOMI in its entirety. Complainant points out that to the best of its knowledge Respondent has not used the term “Toyotomi” in any legitimate connection before, nor is there is evidence of Respondent’s use of or preparations to use the Domain Name in connection with a bona fide offering of goods or services. According to Complainant, there does not appear to be a connection between the Domain Name and Respondent’s name. Complainant states that it has not authorized Respondent to use its TOYOTOMI marks and therefore Respondent does not have trade mark or other rights in the designation “Toyotomi”.
Complainant submits that Respondent has registered or acquired, and is using, the Domain Name in bad faith as it is not using the Domain Name in connection with any bona fide offering of goods and services or made any other legitimate commercial use of it and instead, Respondent is using the site as a parking page featuring sponsored links to websites such as eBay etc. Complainant notes that appearing on the webpage, is a heading: “Click here to buy Toyotomi.com!”.
Complainant asserts that Respondent has registered the Domain Name in an attempt to force Complainant to pay an amount far in excess of the registration costs to obtain the Domain Name, and thus believes that the Domain Name was registered primarily for the purpose of generating income by renting or selling it to Complainant or Complainant’s competitors.
Complainant alleges that when its agent enquired about the purchase price, Respondent made an offer to sell the Domain Name for EUR 12,500, which Complainant submits is evidence that Respondent’s registration of the Domain Name was with the intention to selling it while at the same time generating income through sponsored links. Complainant asserts that this is neither use in good faith nor a legitimate noncommercial use, but constitutes per se an acquisition and use in bad faith.
Complainant further submits that Respondent has in the past registered a variety of domain names with the purpose of selling them.
In response, Respondent contends that Complainant did not register the sole term “Toyotomi” and that in any event trade mark ownership confers no absolute monopoly on a word, place or last name.
Respondent claims that Complainant’s registration of the TOYOTOMI trade mark does not give Complainant exclusive ownership rights to TOYOTOMI as it is a nonexclusive name (covers only certain areas of business), has no secondary meaning, and is used in commerce by businesses other than Complainant without leading to a likelihood of confusion with Complainant.
Respondent claims that the word “Toyotomi” is used by numerous third parties, either singularly or in conjunction with other terms, to identify their name, business, products, and services that bear no association with Complainant. Respondent asserts that “Toyotomi” is a name used in many websites and domain names (commercial, educational, personal) without any particular connotation with Complainant. A search on the Internet search engine “www.google.com” for the name “Toyotomi” yields innumerable third-party web pages that have no reference to Complainant’s trade mark. Websites are operated by companies and individuals located in countries all over the world.
Respondent goes on to submit that there are numerous third-party uses of the last name “Toyotomi” including various sushi bars and restaurants, hotels and spas around the world, including Japan. Most websites and businesses are related to food and sushi because Toyotomi was a famous samurai and restaurant owners compare the samurai’s sword with the chef’s knife. The famous Toyotomi clan, started in 1584, ruled over Japan before the Edo period.
Toyotomi it is said, is also used as a first name by some people in the world and there is also a Toyotomi town located in Hokkaido, Japan. Respondent submits that it is well established under the UDRP that anyone is free to register any city or town name, region or geographic name and point out that there is even a movie that has the last name Toyotomi in its title.
People named Toyotomi are not confined to Japan but the name can be found in the United States of America, Germany, Belarus, France, Thailand and the Russian Federation. In Russia the name is more popular than any other part of the world. There is also a common variation of the name that is “Toyotome” than can be found in the United States.
The Respondent argues that simply owning a trade mark registration does not make a last name or a town name, such as Toyotomi, famous and synonymous with Complainant and that the TOYOTOMI brand might be known in Japan, where Complainant originates from, but it is unknown in Europe.
Respondent claims it only registered the Domain Name because it corresponds to a last name, a samurai and a location in Japan and the fact that there is no relationship between Respondent and Complainant does not mean that Respondent does not have legitimate interests in respect to the Domain Name.
Respondent explains that it is registering and developing dictionary terms in domain names such as <cloud.info> and <athens.info> and is also registering last names. This shows that Respondent was not targeting Complainant when it registered the Domain Name and that Respondent has a legitimate interest in registering these domains.
Respondent accepts it is using the Domain Name as a parking page providing pay-per-click links but submits that that has been accepted by many previous panels as having a legitimate interest in a domain name that is also a last name or town name like this one. It further argues that the sole fact of providing links through a generic directory webpage does not constitute bad faith.
Respondent denies that it is misleadingly diverting consumers or tarnishing the trade mark of Complainant. Respondent landing page at the Domain Name bears no resemblance to Complainant’s website at “www.toyotomi.jp”. The two websites have different fonts, colors and structure.
Respondent denies that offering the Domain Name for sale to the Complainant is evidence of bad faith, and contrary to what Complainant believes, premium domain names are being sold for far in excess of registration costs, an example of which is the Vodafone company which recently sold the domain name <360.com> for USD 17 million.
Respondent notes that Complainant claimed that it anonymously (using a representative that did not identify itself as Complainant) made an inquiry for the Domain Name and was quoted a EUR 12,500 price. Respondent further notes that Complainant failed to disclose that this was not actually a quote, it was a counteroffer made to Complainant to Respondent’s two initial offers. Respondent states that Complainant made two offers, one for USD 1,000 and one for USD 5,000, before Respondent tendered the counteroffer, and suggests that it was only after the anonymous negotiations failed that Complainant filed this UDRP complaint. Respondent notes that previous panels have determined that, when a complainant initiates an offer for the sale of a Domain Name, a respondent’s willingness to engage in negotiations for the sale of the Domain Name does not equate to bad faith, and contends that by making the two offers Complainant thereby recognized Respondent’s rights to the Domain Name.
Respondent denies that it has been involved in various UDRP proceedings as contended by Complainant and states that it has only been involved in one UDRP proceeding in the past and that this UDRP complaint was four years ago, which it won, not lost as portrayed in the Complaint and that the domain name remained with Respondent. Respondent notes that Complainant has made numerous mistakes in the Complaint, both of a factual nature and in the composition of the Complaint.
Respondent suggests that after negotiations failed following the counteroffer by Respondent, Complainant filed this Complaint, which is an attempt at Reverse Domain Name Hijacking and a misuse of the Policy. Respondent argues that Complainant engaged in active misbehavior and tried framing Complainant by deliberately omitting material evidence from the Complaint. Further, Complainant provided copies of the two offers (USD 1,000 and then USD 5,000) that were made by a Mr. Raymakers from the Netherlands on March 18, 2015, and this person was revealed in the Complaint to be a representative of Complainant. In the correspondence, Complainant does not mention any claim of trade mark or service mark rights that would entitle it to the Domain Name.
Respondent submits that it has been put to considerable expense, of its own time and in paying outside counsel to defend this proceeding, which it argues Complainant knew was groundless.
C. Complainant’s reply
Complainant purported to file a reply to the Complaint. The Panel may accept this further submission at its discretion.
In its further submission Complainant notes Respondent’s contention regarding certain errors and omissions in the Complaint and apologizes for any oversight and advises that it never intended to confuse or mislead the Panel. However, Complainant argues the formal mistakes relating to data and the wrongfully cited case cannot change the fact that Respondent does not have any rights or legitimate interest in the Domain Name and that it was registered in bad faith.
Complainant responds in detail to Respondent’s accusation that Complainant tried to frame Respondent by using the search function of the Domain Name landing page. This is firmly denied by Complainant. Detailed reasons and arguments are provided. There is no need to record them here as the Panel places no weight on these allegations.
More to the point, Complainant submits that Respondent cannot rely on the argument that the Domain Name is a surname or the name of a town when at the same time Complainant has been the registered owner of many identical trade marks and an identical company name for a long time, both which are used as a link, whether it be a related link or otherwise, by Respondent to generate income by pay-per-click.
Complainant argues that there is no indication for a right or legitimate interest in the registration of the Domain Name by Respondent in these circumstances and that none of the cases cited by Respondent can support its allegations as the cited issues of the cases are single issues which in itself may support one or the other argument but do not take into account the overall situation in the case at hand.
D. Respondent’s additional response
Respondent then filed an equally lengthy additional response. It argued that the comments sent by Complainant should not be accepted by the Panel as the Rules have no provision for such comments or an additional response. Respondent made detailed submissions responding to the points made by Complainant.
The Panel found little of substance or assistance in either of these additional submissions and while read by the Panel, have been accorded little weight. The Panel now proceeds to address the Complaint and Response as follows.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant asserts that it is a Japanese company which manufactures and sells a range of products including heaters, air conditioners, dehumidifiers, air cleaners and the like. It is the owner of a number of trade marks for TOYO-TOMI, such marks being registered for in excess of 25 years in Japan and certain European countries. Complainant sells its TOYOTOMI branded products in both Japan and Europe. For convenience the TOYO-TOMI and TOYOTOMI trade marks are referred to below as “Complainant’s Trade Mark”).
Complainant asserts that the Domain Name is identical to Complainant’s Trade Mark, a mark in which it has rights and that the Domain Name incorporates Complainant’s Trade Mark in its entirety.
The Panel is satisfied that Complainant has established rights in Complainant’s Trade Mark in connection with a range of heating and cooling products. In light of Complainant’s assertions and lack of any denial by Respondent that Complainant has trade mark rights the Panel accepts that Complainant’s Trade Mark is identified with Complainant and that an unrelated entity or person using a similar domain name may potentially lead to members of the public being confused and deceived.
Complainant argues that the Domain Name is the same as Complainant’s Trade Mark. That is, on the basis that the Domain Name adopts Complainant’s Trade Mark in its entirety. That argument has merit.
In this particular case the Panel finds:
a) Complainant has rights in respect of Complainant’s Trade Mark.
b) The Domain Name is identical to Complainant’s Trade Mark in so far as it contains the element TOYOTOMI.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
The question of whether Respondent has rights or a legitimate interest in the Domain Name must be assessed against Complainant’s rights and assessed taking into account the manner in which Respondent uses the Domain Name. Complainant submits that Respondent is not using the Domain Name for a legitimate purpose, as it contains the entirety of Complainant’s TOYOTOMI mark.
Complainant contends that to the best of its knowledge Respondent has not used the term “Toyotomi” in any legitimate connection. Complainant further contends that Respondent has made no effort to use the Domain Name in connection with a bona fide offering of goods or services. In essence, Complainant asserts that Respondent is simply a passive holder of the Domain Name and has made no effort to use the Domain Name to provide goods or services.
In the absence of a response a panel may be prepared to infer that under those circumstances a respondent lacked a right or legitimate interest in the domain name in issue. However, in this particular case Respondent has fully explained its position. Respondent states that it is in the business of registering and developing dictionary terms in domain names such as <cloud.info> and <athens.info> and also registers last names.
As noted above, Toyotomi is the name of a well-known Japanese samurai and family and is the name of a town in Japan. It is also used widely in, inter-alia, the sushi restaurant industry.
Respondent acknowledges it is using the Domain Name as a parking page providing pay-per-click links but submits that it has long been accepted by UDRP panels that such activity may be legitimate in the case of non-distinctive names of individuals and towns, as is the case here. Respondent submits that Respondent was not targeting Complainant when it registered the Domain Name and that Respondent has a legitimate interest in registering these domain names. The Panel considers this argument has merit under the circumstances.
In terms of the way the Complainant’s case was presented and the evidence relied upon and put before the Panel, there was little evidence to support the allegations made. Further, the submissions were inaccurate and selective in nature. For example, Complainant did not refer to the various offers made by Complainant to buy the Domain Name before Respondent made, what was in effect, a counteroffer (see further discussion below under the bad faith ground). Complainant also portrayed the result of the sole UDRP decision as being against Respondent when in fact it was in favour of Respondent.
Complainant ultimately carries the burden of proof and in the absence of reliable evidence the Panel is not prepared to deprive Respondent of its property in a summary proceeding when the case presented is weak and where, it seems, relevant facts were omitted from the Complaint.
On the other side of the coin, Respondent's argument is at least prima facie plausible. Toyotomi seems to be well known historic figure in Japan and is a name and place. Further, there is no evidence that Respondent was specifically targeting or trying to harm Complainant in any way.
On this basis the Panel is unable to conclude that Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the second element of the Policy has not been met.
C. Registered and Used in Bad Faith
As noted above, Complainant alleges that when in discussion with Respondent its agent enquired about the purchase price for the Domain Name at which point, Respondent made an offer to sell the Domain Name for EUR 12,500, and that this is neither use in good faith nor a legitimate noncommercial use, but constitutes per se an acquisition and use in bad faith. Complainant further submited that Respondent had in the past registered a variety of domain names with the purpose of selling them. Clearly, if established, this could represent evidence of registration and use in bad faith.
However, having made that allegation, it became apparent that the situation was quite different. Respondent, in its response, pointed out that it had not actually provided a quote, but instead had made a counteroffer in response to Complainant’s two earlier offers, one for USD 1,000 and one for USD 5,000; before Respondent tendered the counteroffer. This is relevant because previous panels have determined that, when a complainant initiates an offer for the sale of a domain name, a respondent’s willingness to engage in negotiations for the sale of the domain name does not necessarily equate to bad faith.
The Panel is unable to infer any bad faith on Respondent’s part in the present situation. Accordingly, the third element of the Policy has not been satisfied.
Reverse Domain Name Hijacking
The question arises whether the case put forward by Complainant was so dubious that Complainant must have known it was manifestly weak and that this points towards a situation of Reverse Domain Name Hijacking. Respondent submits that this is an appropriate case for such a finding. The Panel can certainly understand the basis for that submission. However, an alternative inference which can be drawn is that Complainant essentially failed in its complaint not because its case was entirely dubious and Complainant knew this but on the basis that it failed to present its case in a complete and compelling way. On that basis the Panel is not convinced that this is an appropriate case for a finding of Reverse Domain Name Hijacking, but only by a slim margin.
For the foregoing reasons, the Complaint is denied.
Clive L. Elliott Q.C.
The Hon Neil Brown Q.C.
Date: June 29, 2015