WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FANUC Corporation, FANUC UK Limited v. Identity Protection Service, Identity Protect Limited / Anthony Spencer
Case No. D2015-1323
1. The Parties
The Complainants are FANUC Corporation of Oshino-mura, Japan and FANUC UK Limited of Coventry, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Adlex Solicitors, UK.
The Respondent is Identity Protection Service, Identity Protect Limited of Surrey, UK / Anthony Spencer of Bourne, UK.
2. The Domain Name and Registrar
The disputed domain name <fanucboardrepair.com> is registered with Webfusion Ltd trading as 123-reg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 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 30, 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 Amended Complaint on July 30, 2015.
The Center verified that the Complaint together with the Amended 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 August 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2015.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on September 18, 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
According to the Complainants, they are part of the FANUC international group of companies which provides automation products and services such as robotics and computer numerical control systems. The group is one of the largest makers of industrial robots in the world. Its customers include manufacturers of cars and electronics. A brief history of the group is set out at Exhibit 3 to the Amended Complaint.
The name “FANUC” is a coined term derived from “Factory automation numerical control”.
The First Complainant, a Japanese company, was incorporated in 1972 and since then it and its group companies have supplied their automation systems in Japan and worldwide under the name “FANUC” and related names. Extracts from the First Complainant’s consolidated financial results are set out at Exhibit 4 showing net sales for the group of 499,000 million yen (approximately GBP 2,806,000) in 2012 and 450,000 million yen (approximately GBP 2,582,000) in 2013.
The First Complainant’s main website is at “www.fanuc.co.jp” to which <fanuc.com> redirects an extract of which is set out at Exhibit 6.
The First Complainant owns a portfolio of trademarks for FANUC including the following. Printouts of these are set out at Exhibit 7 to the Complaint:
(a) UK Trademark Registration No. 910676 dated June 13, 1967 – Word mark for FANUC in Class 9;
(b) UK Trademark Registration No. 1182663 dated October 1, 1982 – Word mark for FANUC in Class 7;
(c) UK Trademark Registration No. 2337783 dated July 15, 2003 – Word mark for FANUC in Classes 7 and 9;
(d) International Trademark Registration No.948323 designating the EU dated June 11, 2007 – Word mark for FANUC in classes 7, 9, 37 and 42.
The Second Complainant, a UK company, has traded in the UK under the names FANUC/FANUC Robotics since 1982. It is currently the main group trading company in the UK. The turnover of this company was approximately GBP 15.5 million in 2012 and GBP 20 million in 2013.
The Second Complainant’s main website is at “www.fanucrobotics.co.uk”. The Second Complainant offers servicing and repairs and spare parts for its systems. Further background information about the nature and history of the Complainant's business is set out in the abovementioned websites and also the group's annual report.
The disputed domain name was registered on September 11, 2013 as can be seen from the WhoIs printoutat Exhibit 12 to the Amended Complaint. As of January 30, 2014, and as can be seen at Exhibit 13 to the Amended Complaint there was a website available at the disputed domain name comprising a parking page with sponsored links to websites offering robotic and CNC goods and services competing with the Complainant. At Exhibit 14 to the Amended Complaint is the homepage of “www.fugirobotics.com” the first site listed on the parking page and one of the Complainant’s competitors.
On February 13, 2014, the Complainant’s solicitor sent a cease and desist letter by email to which no response was received. The email bounced back the same day with the notification that the mailbox to which the email had been sent had exceeded its storage quota. Copies of the correspondence are set out at Exhibit 15 to the Amended Complaint.
5. Parties’ Contentions
1. The Complainant relies upon its registered trademarks for the mark FANUC and also common law and unregistered rights which it submits it has obtained by virtue of the extensive trading and marketing activities referred to in the Amended Complaint. It submits that it has acquired a substantial reputation and goodwill in the name “FANUC” such that it is recognised by the public as distinctive of the Complainant’s business providing automation products and services such as robotics and CNC systems.
2. The Complainant submits that the disputed domain name incorporates the trademark owned by the Complainant and it differs only by addition of the generic words “board” and “repair”.
3. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.
4. The Complainant submits that the disputed domain name was registered and used in bad faith for the purpose of unfairly disrupting the business of the Complainant by diverting business intended for the Complainant. The Respondent on the evidence is a competitor.
5. The website to which the disputed domain name accesses is essentially a scheme adopted by the Respondent to confuse, attract and profit from Internet users who are searching for the Complainant’s business in search engines, web browsers and otherwise on the Internet.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant relies upon its registered trademarks referred to above as well as its common law rights in the mark FANUC. Having considered the evidence of trademark rights, the Panel is satisfied that the Complainant has rights in the mark FANUC and that these marks predate the date of registration of the disputed domain name.
The next question is whether the disputed domain name is identical or confusingly similar to the mark FANUC. The difference between the disputed domain name and the mark is the addition in the disputed domain name of the two words “board” and “repair”. These are descriptive and generic and denote aspects of the Complainant’s services. This is because the Complainant provides repairs for its products direct to its customers and “board” is arguably a reference to “master board” which is part of the Complainant’s systems. Accordingly, and in the absence of any submissions to the contrary, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark FANUC.
B. Rights or Legitimate Interests
The Panel has considered the Complainant’s submissions and in particular that the Complainant has no association with the Respondent and has never authorised or licensed the Respondent to use its trademarks. The Panel is satisfied on this point. There is no evidence before it which set out any association or link between the Respondent and the use of the marks. There is also force in the Complainant’s submission that the disputed domain name misleadingly implies that its associated website offers repairs to the Complainant’s products whereas the evidence is that the website is designed to generate revenue from sponsored links to products competing with those of the Complainant based upon trademark value. According, it follows that no rights or legitimate interests have been conferred on the Respondent.
There is also no evidence that the Respondent has been commonly known by the name comprised in the disputed domain name. To the contrary, the evidence from the Complainant demonstrates that the Respondent has been using the disputed domain name to attract, confuse and profit from Internet users seeking the Complainant’s website.
Accordingly, the Panel finds for the Complainant in respect of this element having taken into account that there is no evidence to the contrary submitted by the Respondent.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent registered the disputed domain name for the purpose of unfairly disrupting the business of the Complainant by diverting business intended for the Complainant. In particular, it relies upon the evidence that the Respondent must have had the Complainant and its business in mind when registering and using the disputed domain name as the disputed domain name includes the Complainant’s distinctive trademark.
The Complainant submits that it is “inconceivable” that the Respondent registered the disputed domain name independently of that trademark. In the Panel’s view, the Complainant has established that the Respondent was intent upon obtaining commercial gain by means of a deceptive association with the Complainant so that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship of the Respondent’s website.
In the absence of any evidence or submissions from the Respondent, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fanucboardrepair.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: October 7, 2015