WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Infobric AB v. Tomosumi Sasaki/Whois Privacy Protection Service by onamae.com
Case No. D2015-1116
1. The Parties
The Complainant is Infobric AB of Jönköping, Sweden, represented by Zacco Sweden AB, Sweden.
The Respondent is Tomosumi Sasaki of Tokyo, Japan / Whois Privacy Protection Service by onamae.com of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <infobric.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2015. On June 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2015, the Registrar 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 6, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same day.
On July 6, 2015, the Center sent an email communication to the parties in both English and Japanese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent of the Complaint, and the proceeding commenced on July 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2015.
The Center appointed Douglas Clark as the sole panelist in this matter on August 6, 2015. 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 Swedish company. It is the registered proprietor of the trademark INFOBRIC in various countries around the world including in Japan, in classes 9, 35, 42 and 45. The earliest priority date of the trademark appears to be October 30, 2009.
The Respondent is a Japanese individual. The disputed domain name was registered on November 6, 2006. It resolves to a page in Japanese stating that the disputed domain name is registered with the Registrar.
Since 2009, the Complainant has attempted to contact the Respondent to purchase the disputed domain name both through the Registrar and through domain name brokers. There has either been no response to such enquiries or the intermediaries have informed the Complainant that the Respondent does not wish to sell the disputed domain name.
5. Parties’ Contentions
The Complainant contends the disputed domain name is identical or similar to its registered trademark INFOBRIC.
The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name and that it has registered and using the disputed domain name in bad faith.
The Complainant relies principally on the decisions in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 (that passive holding of a domain name can be use in bad faith) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions WIPO Case No. D2009-0786 (“the Octogen case”) (that where a domain name has been registered before a complainant has acquired trademark rights this does not necessarily by itself preclude a finding of bad faith).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement is in Japanese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding to be English on grounds that the disputed domain name was in English, pre-complaint correspondence was in English and that the Complainant was Swedish making English a neutral language.
The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel. None of the reasons given by the Complainant are particularly compelling.
Nevertheless, the Respondent did not respond to the Center’s preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
Further, translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainants registered trademark INFOBRIC. The fact that it may have been formally registered after the disputed domain name was registered is not a relevant issue under the first element of the Policy. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.4).
The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. & C. Rights or Legitimate Interests/Registered and Used in Bad Faith
The real issue in this case is whether the Respondent has rights or legitimate interests and whether it has registered and used the disputed domain name in bad faith.
The facts of the case are:
1) the disputed domain name has been registered for over eight (8) years;
2) the Respondent when contacted by the Complainant made no suggestion that it was willing to sell or transfer the disputed domain name (and, in fact, said it was not interested in selling the disputed domain name).
In these circumstances, the Panel is unable, on the facts before it, and with the procedures available to it, to reach a conclusion that the Respondent has registered or used the disputed domain name in bad faith.
The Panel notes that a general consensus among UDRP panels has developed that the Octogen case and cases that rely on it should not be followed. See in particular: A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc. WIPO Case No. D2010-0800 and Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
On the other hand, some panels have relied on the Octogen case. This Panel, itself, was a member of a three-member panel in Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001 who, under the particular circumstances of that case, held the registrant to its representations made under paragraph 2 of the Policy not to knowingly infringe third party’ rights.
The Panel does not consider it necessary in the circumstances of this case to determine whether the Octogen case should be followed. In the Octogen case, the parties were related and the registrant’s use of the domain name caused the panel to question that registrant’s motives in relation to its paragraph 2 representations, giving rise to factual circumstances that may have justified the decision in that case. In this case, the parties are, apparently, unrelated and moreover there is no use of the disputed domain name that would call into question the Respondent’s motives (let alone as to its paragraph 2 representations); In short, on the current evidence, there is no evidence to support a finding of in bad faith on the part of the Respondent.
The Panel finds it must, therefore, deny the Complaint.
For the foregoing reasons, the Complaint is denied.
Date: August 19, 2015