WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Isetan Mitsukoshi Ltd. v. Haruhiko Chiba
Case No. D2016-2256
1. The Parties
The Complainant is Isetan Mitsukoshi Ltd. of Tokyo, Japan, represented by Nakamura & Partners, Japan.
The Respondent is Haruhiko Chiba of Yokohama, Japan, represented by Ken Imaya, Japan.
2. The Domain Name and Registrar
The disputed domain name <mitsukoshi.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2016. On November 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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. On November 11, 2016, the Complainant filed a first amended Complaint. On November 21, 2016, the Complainant filed a second amended Complaint.
The Center verified that the Complaint together with the amended Complaints 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 of the Complaint, and the proceedings commenced on November 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2016. The Response was filed with the Center on December 11, 2016.
The Center appointed Keiji Kondo as the sole panelist in this matter on January 6, 2017. 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 consolidated subsidiary of Isetan Mitsukoshi Holdings Ltd. which operates variety of business under ISETAN and MITSUKOSHI trademarks.
The Complainant mainly operates department store business in Japan, as one of the leading and principal subsidiaries of Isetan Mitsukoshi Holdings Ltd. The origins of the Complainant go back to 1673 under the name “Echigoya”. Echigoya was incorporated into “Mitsukoshi, Ltd.” as early as 1928.
Isetan Mitsukoshi Holdings Ltd. was established as a result of merger between Mitsukoshi Ltd. and Isetan Co. Ltd.
Mitsukoshi Ltd., including the former company, had operated “Mitshkoshi” department stores in Japan and the name “Mitsukoshi” had been famous in Japan before the disputed domain name was registered.
The Complainant has obtained 68 trademark registrations for MITSUKOSHI, the earliest registration dating back to 1947, with respect to various products and services.
The disputed domain name was registered on April 9, 1996. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
(1) Identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The disputed domain name is confusingly similar to the Complainant’s famous corporate name and trademarks, as it contains “Mitsukoshi” which is still used as the name of the Complainant’s department stores and the part “.com” in the disputed domain name is a generic Top-Level Domain (“gTLD”) identifier.
Therefore, the disputed domain name is substantially similar to the corporate name and the trademarks of the Complainant.
(2) No rights or legitimate Interests in respect of the disputed domain name
The Respondent once suggested that it would transfer the disputed domain name to the Complainant for 10 million Japanese Yen, and later reduced the price to 4 million Japanese Yen. The Complainant submits that it is inferred from the circumstances that the Respondent has neither intention of using the disputed domain name nor carrying out its business under the disputed domain name.
(3) Bad faith registration and use of the disputed domain name
The Respondent intentionally attempted to take commercial advantage of the fame or reputation of the Complainant’s corporate name. General consumers will be misled to websites displaying advertisement or communication not owned by the Complainant. Even if the monetary profit to the Respondent resulting from such confusion may not be large, it is difficult to foresee an affect or damage to be caused by such registration. Damage to the Complainant could be disturbance on the Complainant business. Furthermore, the Complainant is unable to acquire nor use its own name as its domain name even in the case where business preparation for establishing new stores has been completed.
Apparently on behalf of the Respondent, Ken Imaya submitted a response. Without receiving a response from the registrant of the record, “Haruhiko Chiba”, the Panel has decided to consider the contention of Ken Imaya as that of the Respondent, and summarize in this section.
The Respondent states as follows:
“The domain mitsukoshi.com was registered based on our client’s request at that time. […] I have spoken and discussed the case with [the attorney of the Complainant] and confirmed that we can transfer the domain with reasonable price.
[The Complainant] is well known in Japan and some countries outside Japan.However, in Japan, […] there are many ways to write and read the word MITSUKOSHI, such as 満越、光子氏、みつこし、ミツコシ etc, and there are companies/services named and registered with MITSUKOSHI included. We believe that the name Mitsukoshi is not registered or can not be registered in all trademark categories due to above reasons and circumstances in Japan.
[…] We are curious why the Complainant has submitted this Complaint after so many years have past and the department store company Mitsukoshi merged with Isetan and are now called Isetan Mitsukoshi Ltd.
We hereby confirm that we have no intentions to disrupt the [C]omplainant’s business. We are not certain about its valuation process but we would like to conclude this case where we transfer the domain to the [C]omplainant and the [C]omplainant would pay the appropriate price for its value and costs we have paid till the date.”
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <mitsukoshi.com> comprises the word “mitsukoshi”, which is identical to the Complainant’s trademark.
The addition of the generic Top-Level Domain (gTLD) “.com’” is typically disregarded for the purpose of the comparison.
Therefore, the Panel concludes that the disputed domain name is identical to the Complainant's trademark.
B. Rights or Legitimate Interests
According to the Response, the disputed domain name was registered based on the Respondent’s client’s request. Although the Respondent is still holding the disputed domain name, the disputed domain name was registered for the client’s business. In other words, the disputed domain name has not been registered for the Respondent’s own use.
Furthermore, the Respondent does not describe how it is using the disputed domain name. The Panel notes that the disputed domain name does not resolve to an active website.
The Respondent identifies several ways to write “mitsukoshi” in Japanese. Although the examples given by the Respondent are not unrealistic, the Respondent does not give any business that the Respondent itself carries out using such names or symbols. Existence of possibility that someone in the public may have used, be using, or will use some other way of writing “mitsukoshi” than the way the Complainant writes it would not provide a basis for concluding that the Respondent has rights or legitimate interests in the disputed domain name.
Considering these circumstances, the Panel finds, on balance, that the Respondent has no rights or legitimate interests with the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established it is widely known for its department store services under the trademark MITSUKOSHI. The earliest trademark registrations date back to 1947.
The Respondent submits that there are several ways to write “mitsukoshi” in Japanese, and arguably other companies may be using this term.
In the Response, the Respondent confirms to transfer the disputed domain name to the Complainant at reasonable price. However, the Complainant submits that the Respondent suggested earlier that it would transfer the disputed domain name to the Complainant for 10 million Japanese Yen. On November 21, 2016, the Respondent suggested to the attorney of the Complainant 4 million Japanese Yen as reasonable price.
Although considering the registration period, 4 million Japanese Yen is in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
The Panel further notes that the Respondent in its Response has acknowledged that the Complainant “is well known in Japan and some countries outside Japan”.
Based on the Complainant’s goodwill in its trademark MITSUKOSHI, and noting the above discussed offers to sell the disputed domain name to the Complainant, the Panel finds it more likely than not 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, <mitsukoshi.com>, be transferred to the Complainant.
Date: January 20, 2017