WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cosmetique Raisonne Co., Ltd. v. Registration Private, DomainsByProxy LLC / Akisuki Suzuki, Tokyo Love INC.
Case No. D2017-1102
1. The Parties
The Complainant is Cosmetique Raisonne Co., Ltd. of Tokyo, Japan, represented by World Marks, Japan.
The Respondent is Registration Private, DomainsByProxy LLC of Scottsdale, Arizona, United States of America (“United States”) / Akisuki Suzuki, Tokyo Love INC. of Tokyo, Japan, self-represented.
2. The Domain Name and Registrar
The disputed domain name <tokyoloveshop.com> 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 June 6, 2017. On June 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2017, 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 June 8, 2017, 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 June 9, 2017.
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 of the Complaint, and the proceedings commenced on June 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. The Response was filed with the Center on June 23, 2017.
The Complainant and the Respondent have each filed several unsolicited supplemental filings with the Center.
The Center appointed Keiji Kondo as the sole panelist in this matter on July 4, 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.
On August 8, 2017, the Panel issued the Administrative Panel Procedural Order No. 1 to the Parties determining that no consideration will be given to the Parties various communications and submissions received on July 4, 2017 and notably thereafter. The Panel gave the Parties the opportunity to supplement their arguments regarding counterfeit goods being sold on the website to which the disputed domain name resolves by August 17, 2017. On August 17, 2017, the Center received both the Complainant’s and the Respondent’s submissions to the Procedural Panel Order.
4. Factual Background
The Complainant has been selling soap and cosmetics etc. in many countries for more than 10 years and has trademarks in various countries including Japan. The Complainant’s registered trademarks in Japan before the disputed domain name registration are as follows:
(1) Reg. No. 5322075 “TOKYO LOVE/東京LOVE” registered on May 14, 2010 for classes 21, 25, 26, 30 and 32; for cosmetic utensils in class 21; clothing in class 25; accessory for hair in class 26, dietary and supplemental foods in class 30, drinks in class 32; and.
(2) Reg. No. 5391822 “TOKYO LOVE/東京LOVE” registered on February 18, 2011 for class 3 for cosmetics and soap.
The disputed domain name <tokyoloveshop.com> was registered on September 12, 2012.
5. Parties’ Contentions
The disputed domain name “tokyoloveshop.com” is confusingly similar to the trademark “TOKYOLOVE” of the Complainant for the following reasons:
(1) The main difference between the Complainant’s TOKYO LOVE marks and the disputed domain name is the addition of the term “shop” at the end. As the word “shop” is commonly used for commercial or shopping sites, the inclusion of “tokyolove” is more important than “shop”. The word “shop” is insufficient to prevent the confusion between “tokyoloveshop” and TOKYO LOVE.
(2) The disputed domain name <tokyoloveshop.com> merely reproduces the Complainant’s TOKYO LOVE mark with the addition of the dictionary term “shop”, which is largely used on the Internet in connection with online ecommerce webpages. This addition does not negate the confusing similarity with Complainant’s trademarks. (See, Hayat Kimya Sanayi Anonim Şirketi v. Mohsen Akbari, WIPO Case No. D2016-2612)
(3) The addition of the generic Top-Level Domain (“gTLD”) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name.
The Complainant has never authorized the Respondent to use the trademarks or to register a domain name comprising the trademarks. There is no legal or commercial relationship between them which would entitle the Respondent to use or register the disputed domain name.
To the best of the Complainant’s knowledge, it cannot find any connection with the Respondent and “tokyolove”. The Respondent has no registered trademarks or trade names corresponding to the disputed domain name and it has not conducted any prior business under the “tokyolove” brand in connection with the bona fide offering of goods.
At the time of registration of the disputed domain name, the Complainant has never heard that a brand “tokyolove” has been used on cosmetics and soap by other traders including the Respondent. The Respondent has not been commonly known by the disputed domain name.
As the Complainant has never given authorization to use its trademarks, the Complainant believes that the goods on the website to which the disputed domain name resolves (the “Website”), are counterfeits. Apparently, the Respondent registered the disputed domain name to obtain commercial profit unfairly by selling counterfeits of “tokyolove” brand on the Website.
The Respondent had the Complainant in mind when registering the disputed domain name.
The Complainant cannot visit the Respondent at the address which is disclosed as contact information (Annex 2). The Respondent’s address as reported at the time of registration of the disputed domain name: “No.6-25-3 Adachi, Adachi-ku, Tokyo 120-0015, Japan” appears to be false. “Adachi” only ranges from No.1 to No.4, but “No.6 area” does not exist in Adachi. According to the Complainant, the Respondent’s having provided a false address, while not an express ground of bad faith under paragraph 4(b), has been widely recognized by previous UDRP panels as a further indication of bad faith (see, Philip Morris USA Inc. v. Conera, WIPO Case No. D2010-0075).
According to Respondent, Tokyo Love is a very vague name comprised of the words, “Tokyo”, a place, and “Love”. It only conveys an abstract feeling. If someone asks an ordinary person in Japan if he/she knows a brand called “Tokyo love”, he/she will point you to a sex toy shop or a sex club in Japan.
A Google search using “http://www.google.co.jp” with the keywords “tokyo love” will show that 100% of the first page results are about sex shops, sex toys, a song, and prostitution websites and not the Complainant’s brand.
It was never the Respondent’s intention to use the disputed domain name to misrepresent itself as the manufacturer of the Complainant’s products. The Respondent clearly tells its clients that it is just a reseller. On the Respondent’s FAQs page, “http://tokyoloveshop.com/faqs/”, the Respondent clearly states on the first paragraph that:
“Tokyo Love Shop exclusively sells Medical Grade items that are not possible to sell commercially since they are labeled “For Professional Use”. You can purchase these products legally online thru this website. You can use these Professional labeled products safely as long as you follow our instructions.”
“Tokyo Love Shop line has our amazing Blue Peel, TCA Peel, Stem Cell Cream, Snail Cream and other high quality, professional grade products. We also resell Tokyo Love Soaps manufactured by Happy-Price.”
“Please do take note that Tokyoloveshop.com and Tokyo Love Shop are in no way connected with Happy-Price which manufactures Tokyo Love Soap, we just resell their wonderful soaps as well! Kindly browse our FAQs page below to know more about us.”
The Respondent always received the Complainant’s products from the Complainant. However, after the Respondent ignored the Complainant’s offer of exclusive distributorship in the Philippines in exchange for the disputed domain name around March 2013 (SEE ANNEX 4) the Complainant suddenly made it hard for the Respondent to purchase Complainant’s products. Initially, delivery was just late, and then, the Complainant stopped replying to the Respondent’s messages.
The products offered on the Website are not counterfeit. If the Respondent had been indeed selling counterfeit soaps, it would not have bothered communicating with the Complainant to the point of almost begging the Complainant for the stocks to arrive. The Respondent would not have bothered contacting the Complainant’s distributor which sold the soap for a higher price after the Complainant refused to communicate with the Respondent, either. There would have been no communication between the Respondent, the Complainant and the Complainant’s distributor. There would have been no bank deposits and stocks being delivered to the Respondent from the Complainant. The Respondent would have been suspended via Paypal and Google for just a single report of counterfeiting from any of its clients.
6. Discussion and Findings
A. Identical or Confusingly Similar
The trademark based on which the Complaint was filed is “TOKYO LOVE/東京 LOVE”. The disputed domain name is <tokyoloveshop.com>. Accordingly, the question before the Panel is whether <tokyoloveshop.com> is identical or confusingly similar to “TOKYO LOVE/東京 LOVE”.
The Complainant contends that the disputed domain name merely reproduces the Complainant’s TOKYO LOVE mark with the addition of the term “shop”, and that the addition of “shop” adds no distinctiveness. For the following reasons, the Panel agrees with reservation.
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The dominant portion of the registered trademark is, as the Complainant contends, “TOKYO LOVE”, and the disputed domain name incorporates it. Therefore, the disputed domain name is considered confusingly similar to the registered trademark for purposes of UDRP standing.
However, the Panel would like to point out that the level of similarity is not so high in this case that the second and the third elements could be easily inferred from the first element. It may be unlikely that likelihood of confusion would be found in trademark infringement litigation, where a deeper examination of the facts in regard to this assessment would occur.
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark to the extent that UDRP standing is concerned.
B. Rights or Legitimate Interests
Paragraph 4(c)(i) reads “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” In the present case, it is undisputed that the Respondent offers goods for sale at the website to which the disputed domain name resolves. The Complainant does not dispute that at least some of the goods offered or sold at the Website are its original products. Therefore, the Complainant must show that offering of goods is not bona fide.
This is addressed with respect to the third element.
C. Registered and Used in Bad Faith
The level of similarity between the Complainant’s trademark and the disputed domain name is not so high to infer bad faith from the similarity itself.
“TOKYO LOVE” consists of “TOKYO” and “LOVE”, and conveys a meaning of Tokyo’s love or love in Tokyo. The disputed domain name, “tokyoloveshop”, consists of “tokyo”, “love” and “shop”, but a usual viewer would see it as combination of “tokyo” and “loveshop” because affinity between “love” and “shop” is stronger than between “tokyo” and “love”. Accordingly, the disputed domain name would convey a meaning of love shop in Tokyo. Although “love shop” is not a dictionary term, one would easily recognize it as meaning love-related shop.
Although difference in the meaning would not per se negate bad faith, it necessitates consideration of other factors. In this regard, the Respondent contends, and the Complainant does not dispute, that the Respondent offers its original goods at the Respondent’s Website. The Complainant does not show any evidence that the offering was commenced only after the Complainant’s notice to the Respondent. Therefore, without other factors, the Panel could not conclude that the Respondent’s use of the disputed domain name is not bona fide.
The Complainant contends that the Respondent sells counterfeits of the TOKYO LOVE brand at the Respondent’s Website. The Complainant’s product is called “Tokyo Love Soap”. If sale of counterfeit goods were proven, the Respondent’s use of the disputed domain name would not be found bona fide under usual circumstances. However, the Respondent vigorously denies sale of counterfeit goods..
Given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods can never confer rights or legitimate interests on a respondent, such behavior, if proven, is manifestly considered evidence of bad faith (WIPO Overview 3.0, section 3.1.4). However, if the Respondent sold counterfeits goods without knowing that they were counterfeit, that is, believing that they were genuine, sale of counterfeit goods at the website would not be considered evidence of bad faith, though such sale could be actionable under a national trademark law. In this case, the Respondent vigorously denies sale of counterfeit goods. With the given evidence submitted by the parties, the Panel cannot conclude that the Respondent’s denial is totally groundless, and the denial is manifestation of bad faith.
As to the question whether the goods were counterfeit or genuine, the Complainant offers evidence containing a comparison of images copied from the Website with the images of packages that the Complainant asserts are genuine. The Panel notes that differences exist, but the Panel is hesitant to find that goods sold at the Website were counterfeit only based on the images of the packages. The packages may have different versions over time. In this respect the Panel notes that even the packages that the Complainant asserts are genuine show different addresses of the Complainant, perhaps meaning that some packages are old and others are new.
The Complainant contends that the Respondent started to sell counterfeits in 2012. This contention is based on the Complainant’s contention that no one should have sold genuine goods before September 2013.
However, the Respondent contends that the Respondent purchased genuine goods from Happy-Prince, which is a former trade name of the Complaint, in 2012. Although given the chance, the Complainant does not present effective rebuttal against the Respondent’s contention.
In support of the Respondent’s contention, the Respondent refers to an email sent from the Complainant to the Respondent on March 18, 2013, which, in pertinent part, reads as follows:
“We are interested in offering exclusive distribution of Tokyo love soaps
And give you the domain of www.tokyolovesoap.ph
In exchange of this, we are interested in the domain you
Which is www.tokyoloveshop.com”
This email shows that the Complainant was aware of the Respondent’s website, and knew that the Respondent was selling Complainant’s products. The date of the email is March 2013, which is six months before which, according to Complainant, no one should have sold genuine TOKYO LOVE products to the Respondent. It seems to the Panel that the Complainant’s contention contradicts the email.
It seems to the Panel that the Complainant tries to use the procedure under the Policy to resolve a larger dispute between the parties. However, the procedure is designed to resolve much clearer cybersquatting cases, without discovery, live testimony, cross-examination, and other means for fact finding which are available.
For the foregoing reasons, the Complaint is denied.
Date: September 1, 2017