WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aston Martin Lagonda Ltd v. Shinichi Wanikawa, Wanikawa Shinichi
Case No. D2017-2017
1. The Parties
The Complainant is Aston Martin Lagonda Ltd of Warwickshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Shinichi Wanikawa, Wanikawa Shinichi of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <astonmartin.shop> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2017. On October 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2017, 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 October 20, 2017, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on October 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on November 22, 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
Founded in 1913, the Complainant Aston Martin Lagonda Ltd is a worldwide car brand which has over 150 dealerships in 51 countries. In particular, in Japan the Complainant has five dealerships in Fukaoka, Hiroshima City, Nagoya-City, Osaka and Tokyo.
The Complainant is the owner of more than 1,500 marks in 91 jurisdictions. Of these, 648 of these filed marks contain the term ASTON MARTIN and 231 marks are for the ASTON mark. In Japan, the Complainant is the proprietor of the trademark ASTON MARTIN with registration no. 1768247 which was registered on April 14, 1982.
The Complainant is also the owner of over 300 domain names and the Complainant's domain name portfolio includes, amongst others, the following:
June 15, 1995
February 6, 2000
July 20, 2009
March 27, 2002
July 3, 2016
August 23, 2001
March 31, 2015
October 18, 2016
The Respondent is Shinichi Wanikawa, Wanikawa Shinichi of Tokyo, Japan.
The disputed domain name <astonmartin.shop> was registered on September 26, 2016. The disputed domain name redirects Internet users to a pay-per-click ("PPC") website.
5. Parties' Contentions
Identical or confusingly similar
The Complainant submits that the disputed domain name contains its registered trademark ASTON MARTIN in full which may mislead the public that the disputed domain name is somehow connected to the Complainant.
The Complainant also submits that the generic Top-Level Domain ("gTLD") ".shop" should be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark.
The Complainant further submits that the risk of confusion is intensified by virtue of the generic definition of the word "shop". Internet users familiar with some of the Complainant's domain names are likely to believe that the disputed domain name may have been specifically designed to lead to a site from which Aston Martin branded goods or services may be bought and sold.
No rights or legitimate interests
The Complainant submits that the Respondent is not the holder of the trademark ASTON MARTIN, has no rights or legitimate interests in the trademark ASTON MARTIN, and is not commonly known by the disputed domain name.
The Complainant also submits that the Complainant has not licensed or otherwise granted permission to the Respondent to make use of its ASTON MARTIN mark or the disputed domain name.
Registered and is being used in bad faith
The Complainant submits that since its trademark is well known in Japan and predates the registration of the disputed domain name by at least 34 years the Respondent was or should have been aware of the ASTON MARTIN trademark prior to registering the disputed domain name and this constitutes bad faith.
The Complainant emphasizes the fact that the disputed domain name uses the Complainant's trademark in its entirety, suggesting knowledge of the Complainant's rights in the trademarks. Furthermore, the Complainant maintains that the website to which the disputed domain name currently resolves contains PPC links that all relate to the Complainant's Aston Martin brand and its various automobile models or to its competitors such as BMW. Therefore, the Complainant argues that the Respondent is using the disputed domain name for commercial gain and is profiting from the Complainant's trademark through click-through fees by users of the website.
The Complainant further submits that the Respondent's bad faith is evidenced by its targeting well-known luxury automotive brands by incorporating their marks with a corresponding ".shop" domain name: <alfaromeo.shop>, <mercedes-benz.shop> and <porsche911.shop>. The domain name <volkswagen.shop> was ordered to be transferred to the complainant in Volkswagen AG v. Shinichi Wanikawa, WIPO Case No. D2016-2238).
Lastly, given that the Complainant already owns several ASTON MARTIN related domain names which utilise new gTLD extensions, and that the disputed domain name, which comprises solely of the Complainant's trademark and gTLD ".shop" as a signifier for a shop, the Complainant also submits that unsuspecting Internet users may well come across the disputed domain name and believe that it could be owned by the Complainant, therefore such use constitutes bad faith.
The Respondent did not reply to the Complainant's contentions.
6.1 Language of the Proceeding
The language of the Registration Agreement is in Japanese. However, paragraph 11(a) of the Rules provides that:
"unless otherwise agreed by the parties, or specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complainant requested the language of the proceeding be in English on the grounds that neither the Complainant, nor its representatives, is familiar with the Japanese language therefore the Complainant is not in a position to conduct these proceedings in Japanese without facing significant additional expense and delay. The Complainant further submits that the Respondent has registered the disputed domain name in standard English characters, and numerous other similar English language domain names such that the Respondent should have a functioning command of the English language.
The Respondent has not responded to the proceeding nor to the request for the language of the proceeding to be in English.
In Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, this panel decided that the respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint."
Based on the fact that the Respondent has not responded to the Center's notification of a language request the Panel determines to accept the Complaint in English. As the only pleading before the Panel is in English it will render its decision in English.
6.2 Substantive Matters
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <astonmartin.shop> contains the Complainant's ASTON MARTIN trademark in full and is followed by the gTLD ".shop".
The gTLD is disregarded and the Panel finds the disputed domain name is identical to the Complainant's registered trademark ASTON MARTIN.
The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
The Respondent has no connection with the Complainant and has never sought or obtained any trademark registrations for the trademark ASTON MARTIN. The Respondent is not a licensee of the Complainant and is not commonly known as "astonmartin.shop". The Respondent's use of the disputed domain name for a PPC page does not, in the present case, amount to a bona fide offering of goods or services. It, therefore, has no rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and used in bad faith.
Given the fame of the Aston Martin brand and the fact the Respondent has registered other well-known brands as domain names, the Panel is satisfied that that the Respondent knew of the Complainant when the Respondent registered the disputed domain name.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Respondent is using the disputed domain name for commercial gain and is profiting from the Complainant's trademark through click-through fees by users of the website. The use of the Complainant's trademark is clearly designed to attract users.
Further it is clear from the evidence that the Respondent is in the business of registering domain names of well-known brands further supporting a finding of bad faith.
Having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <astonmartin.shop> be transferred to the Complainant.
Date: December 5, 2017