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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

John Holland Group Pty Ltd v. Whois Privacy Protection Service by onamae.com / Yoshio Maeda

Case No. D2015-2271

1. The Parties

The Complainant is John Holland Group Pty Ltd of Melbourne, Victoria, Australia, represented by Crowell & Moring, LLP, Belgium.

The Respondent is Whois Privacy Protection Service by onamae.com of Tokyo, Japan / Yoshio Maeda of Kyoto, Japan.

2. The Domain Name and Registrar

The disputed domain name <johnhollandrail.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 December 14, 2015. On December 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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 December 16, 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 December 17, 2015.

On December 16, 2015, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On December 17, 2015, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.

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 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceeding commenced on December 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2016. The Respondent submitted emails to the Center on December 18, 2015 and January 18 and 19, 2016. In response to the Respondent’s email and the Center’s email of December 20, 2016, informing the Parties of settlement options, the Complainant confirmed that it wishes to proceed without suspension. The Center notified the Parties about the commencement of panel appointment process on January 19, 2016.

The Center appointed Haig Oghigian as the sole panelist in this matter on February 17, 2016. 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 Complainant, John Holland Group Pty Ltd (i) is one of Australia’s leading engineering, contracting and services providers to the infrastructure, energy, resources and transport services sectors, (ii) has been providing innovative high-performance engineering and construction solutions for more than 65 years, and (iii) mainly operates across Australia, New Zealand and South East Asia.

The Complainant is the holder of the JOHN HOLLAND figurative mark registered in Australia in 2010 as well as the JOHN HOLLAND word mark, registered in Australia in 2013.

The disputed domain name <johnhollandrail.com> was registered on December 11, 2014, which resolves to a website including advertisements in Japanese language relating to lactic acid bacteria.

5. Parties’ Contentions

A. Complainant

According to the Complainant, (i) the JOHN HOLLAND trademark is well-known, as shown by the results on search websites such as Google, as well as by references in press articles and (ii) the Complainant actively promotes its JOHN HOLLAND trademark through its website linked to the domain name <johnholland.com.au>.

The Complainant contends that:

(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, mainly because it incorporates the JOHN HOLLAND trademark in its entirety and simply adds the generic term “rail”, and, in this case, the addition of the generic term “rail” increases the confusion amongst Internet users as it refers to an industry sector in which the Complainant is active;

(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not commonly known by the disputed domain name, it has not acquired service trademark or service mark rights and the Respondent’s use was not authorized by the Complainant; and

(3) the disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent numerous emails to the Center indicating its willingness to transfer the disputed domain name, and that its registration has expired on December 11, 2015.

6. Discussion and Findings

A. Language of the Proceeding

The Registration Agreement is in Japanese. Pursuant to Rules, paragraph 11, 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, i.e., the default language of the proceeding shall be Japanese. However, the Complainant upon receiving the Notification of Language of Proceeding from the Center submitted a supported request as to why the proceeding should proceed in English.

Although the Center had made a preliminary determination to accept the Complaint filed in English, pursuant to paragraph 11 of Rules, the Panel is granted discretion to determine the language of proceeding having regard to the circumstances of the case. The Panel may choose to write a decision in either language, or request translation of either party’s submissions after taking into account the fairness to both Parties in their abilities to prepare the necessary documents and present the case.

The Panel notes that a practical policy or exception to the general language requirement set in paragraph 11(a) of the Rules and held by the majority of UDRP panels is that “in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement.”

The Panel also notes that the Respondent has failed to file any formal response to the Complaint or comment or object to the Complainant’s language request. Indeed, in the Panel’s view a respondent’s failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favor of the language of the Complaint. Accordingly, the Panel proceeds to this decision in English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the complainant to prove that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.

The disputed domain name contains the JOHN HOLLAND mark in its entirety, and “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. Further, the addition of the term “rail” increases the confusing similarity between the disputed domain name and the Complainant’s trademarks as it refers to an industry sector in which the Complainant is active.

For the above reasons, and in accordance with previous UDRP decisions, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:

- demonstrable preparations to use or use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i));

- an indication that the respondent has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or

- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)).

In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is clear on the given evidence that the disputed domain name was registered after the Complainant registered and started to use the JOHN HOLLAND marks. Further, there is no evidence that the Respondent has been or is commonly known by the disputed domain name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name or any trademark confusingly similar thereto, as a domain name or for any other purposes.

Further, the disputed domain name refers to a website which also includes advertisements in Japanese relating to lactic acid bacteria. It also contains links to other commercial websites. Such use does not constitute a legitimate or fair use according to the Policy.

Therefore, in the absence of any Response to rebut the Complainant’s prima facie case, and in view of the Respondent’s lack of interest in maintaining the disputed domain name, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate the respondent’s bad faith registration and use of the domain name. Such circumstances include:

- use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the respondent’s website or location (paragraph 4(b)(iv)).

In the Panel’s view, the Respondent must have had knowledge of the Complainant’s rights in its marks when the Respondent registered the disputed domain name, since the Complainant’s marks are unique and have been used for many years. The choice of the domain name was therefore intentional and not random. “Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.” Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. The JOHN HOLLAND trademark is widely known and the Respondent has no connection to the Complainant, is not authorized and does not have a legitimate purpose to use the Complainant’s trademarks.

Finally, the Panel finds that by fully incorporating the Complainant’s trademark into the disputed domain name and by using it in connection with a website which includes advertisements in Japanese relating to lactic acid bacteria and other commercial websites, the Respondent falsely creates the impression that it is associated with the Complainant, such conduct disrupts the Complainant’s business, and supports a finding of bad faith. Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by 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 disputed domain name, <johnhollandrail.com>, be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: February 29, 2016

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