WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KYOCERA Document Solutions America, Inc. v. David Pontier

Case No. D2015-1130

1. The Parties

The Complainant is KYOCERA Document Solutions America, Inc. of Fairfield, New Jersey, United States of America (“United States”), represented by Lowenstein Sandler LLP, United States.

The Respondent is David Pontier of Las Vegas, Nevada, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <kyocerataskalfacopiers.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2015. On July 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 2, 2015, 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 July 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2015. The Respondent filed an email communication with the Center on July 21, 2015. On the same day, the Complainant replied hereto by filing an email communication with the Center. On July 25, 2015, the Respondent filed an email communication with the Center. The Center notified the parties of the commencement of the Panel appointment process on July 27, 2015.

The Center appointed Ellen B Shankman as the sole panelist in this matter on August 4, 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 date of the Domain Name registration was confirmed by the Registrar to be May 19, 2015.

The Panel conducted a limited search on the United States Patent and Trademark Office website to confirm that the trademark KYOCERA is registered in the United States (December 2, 1975) and predates the Domain Name’s registration.

The Panel also conducted an independent search to determine that the Domain Name is currently active, and resolves to a GoDaddy.com “parking” page.

Further, the Panel also confirmed that on March 29, 2015, a decision was rendered to transfer the domain name <kyocera-taskalfa-copiers.com> from the Respondent to the Complainant in KYOCERA Document Solutions America, Inc. v. David Pontier, WIPO Case No. D2015-0035.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it is a member of the KYOCERA Corporation (“KYOCERA”) family of companies. The Complainant is the subsidiary of KYOCERA Document Solutions, Inc. and exclusive United States licensee of the KYOCERA and TASKALFA trademarks (the “KYOCERA Mark” and “TASKALFA Mark,” respectively), and is responsible for protecting KYOCERA’s intellectual property interests in the United States. The Complainant argues that trademark licensees and entities related to the actual trademark holder possess rights under the UDRP.

The Complainant further alleges that the KYOCERA Mark is registered in 104 countries, the TASKALFA Mark is registered in 49 countries and that members of the KYOCERA family own approximately 344 domain names incorporating the KYOCERA Mark and 20 domain names incorporating the TASKALFA Mark.

The Complainant alleges that, in 2013, they received approximately USD 700 million in revenue from sales under the KYOCERA Mark, and approximately USD 237 million through sale of copier machines under the TASKALFA Mark. In 2013, the Complainant spent approximately USD 2 million in marketing and promotional activities in support of the KYOCERA and TASKALFA Marks.

On January 10, 2015, the Complainant initiated a UDRP proceeding, KYOCERA Document Solutions America, Inc. v. David Pontier, supra for transfer of the domain name <kyocera-taskalfa-copiers.com>, which involves the same parties as in this case. On March 29, 2015, the panel in that case decided the Complainant had met the requirements of paragraph 4(a)(i)-(iii) of the Policy and ordered the transfer of the domain name <kyocera-taskalfa-copiers.com> to the Complainant. On April 14, 2015, the domain name
<kyocera-taskalfa-copiers.com> was transferred to the Complainant.

On May 19, 2015, the Respondent registered the Domain Name <kyocerataskalfacopiers.com>.

The Complaint alleges that as of June 22, 2015, the Respondent uses the Domain Name as a “parked” page featuring pay-per-click links to third party sites.

To summarize the Complaint, the Complainant is the owner of the KYOCERA and TASKALFA Marks. The Domain Name is confusingly similar to the Marks. The addition of the generic word “copiers” does not prevent a finding of confusing similarity. The Complainant contends that a similar finding should be made in this case as was found in KYOCERA Document Solutions America, Inc. v. David Pontier, supra, in which the domain name <kyocera-taskalfa-copiers.com> was transferred to the Complainant, since the deletion of the hyphens is not a material improvement and does not prevent a finding of confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith. Thus, the Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not provide any facts which would dispute any of the allegations regarding fame of the mark by the Complainant.

On July 21, 2015 the Center received an email from the Respondent alleging that the Complainant has no legal right to “his” registered Domain Name and that the Complainant could have registered the Domain Name for only a few dollars but choose not to. The Respondent further alleges that, if the Complainant had a legal right to the Domain Name, the Complainant gave up that right by failing to register it and that the Complainant has declined or neglected to provide any proof or reason why the Complainant did not register the Domain Name.

The Respondent contends that the Complainant is harassing him solely for the purpose of interfering with his attempts to sell “6 new in box Kyrocera [sic] copy machines” that he owns, and additionally claims that the Complainant monitors his domain registrations and seeks to “steal” each domain he registers.

The Respondent claims that, having registered the Domain Name, he has the legal right to use it and that the Complainant failed to provide any legal reason that would surpass his legal claim to the Domain Name. The Respondent states that the Complainant failed to provide any legal basis for stealing his Domain Name.

On July 25, 2015, the Center received another email from the Respondent stating:

“kyocerataskalfacopiers.com is not a trademarked name or term. I paid for the right to use the domain. No one should be allowed to interferes with my use of the domain name.

In the United States, sales of personal property are regulated by State and Federal government NOT corporations. This company is attempted to interfere with my legal rights to sell my personal property. In the United States if someone purchases a Camaro car from Chevrolet. The car becomes personal property of the purchaser. Once purchased the owner is allowed to sell the car if the owner so desires. That owner is allowed to describe the car as a Chevy Camaro if advertising in the newspaper, on a sign or on the Internet just check autotrader.com or ebaymotors.com. Similiary if I want to sell my personal property copy machines online I am allowed to describe my personal property in my internet domain name and website. English is a free language and I have the right to sell my personal property and to describe it in English under United States Federal and State laws.

This corporations claim I am not an authorized dealer has no bearing on my use of my domain name. I own several Kyrocera Taskalfa copiers they are my personal property I paid for them and I am allowed under US law when selling them to tell potential buyers the name of the manufacturer and the model numbers.

This corporation has no legal right to my domain name and has failed to prove and legal basis for blocking my use of the domain.”

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in the KYOCERA and TASKALFA Marks as the exclusive licensee in the United States of the Kyocera Corporation. The Panel further finds that the Domain Name is confusingly similar to the KYOCERA and TASKALFA Marks. The Domain Name incorporates the KYOCERA and TASKALFA Marks in their entirety and merely adds the descriptive term “copiers”, in combination with the generic Top-Level Domain (“gTLD”) “.com.”

See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 stating “[t]he incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”

Moreover, the inclusion of two different marks owned by the Complainant in the Domain Name will only increase consumer confusion.

The Panel agrees that trademark licensees and entities related to the actual trademark holder possess rights under the UDRP. See, e.g., Komatsu Deutschland GmbH v. Ali Osman / ANS, WIPO Case No. D2009-0107 (finding the complainant to be a beneficiary of the mark at issue, as a wholly-owned subsidiary of a company that was a wholly-owned subsidiary of the actual trademark holder, thus giving it rights under the UDRP); Teva Pharmaceutical USA, Inc. v. US Online Pharmacies, WIPO Case No. D2007-0368 (“[a]s the controlling parent corporation and exclusive licensee of the trademark owner, Complainant has sufficient rights to satisfy Policy, paragraph 4(a)(i).”); Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, WIPO Case No. D2003-0624 (“[a]s a matter of U.S. law, which governs these proceedings, even a non-exclusive licensee has the right to assert trademark rights in a licensed mark and to take action to protect the licensed mark”).

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to trademarks in which the Complainant has rights, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <kyocerataskalfacopiers.com> and that he is not related to or affiliated in any way with the Complainant, and has not been authorized to use the Marks.

The Respondent asserts that he is using the Marks and Domain Name under fair use and legally.

The Panel rejects the Respondent’s arguments and finds that the Respondent lacks rights or legitimate interests in the Domain Name. While the Respondent has indicated that he intends to use the Domain Name for the resale of the Complainant’s goods, which, under certain conditions, may give rise to rights or legitimate interests (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), the record reflects that the Domain Name has not been put to this use. Rather, the Domain Name resolves to a registrar “parking” page featuring pay-per-click links to third party sites. In the circumstances of this case, the Panel finds that this use does not give rise to any rights or legitimate interests.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the distinctiveness of the Complainant’s Marks and reputation, and given the fact that the Domain Name was registered approximately two months after the nearly identical domain name <kyocera-taskalfa-copiers.com> was transferred to the Complainant, the Panel finds that the holding in this case should be consistent with the holding in KYOCERA Document Solutions America, Inc. v. David Pontier, supra.

The Panel finds that Respondent’s repeat registrations of domain names incorporating the Complainant’s KYOCERA and TASKALFA Marks indicates bad faith by the Respondent.

Given the evidence of the Complainant’s prior rights in the marks, the timing of the registration of the Domain Name, together with evidence of the use of the Marks both in the Domain Name as well as in the website by the Respondent, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <kyocerataskalfacopiers.com>, be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: August 19, 2015