WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Interbrand Group (“Interbrand”) v. Whois Privacy Protection Service by VALUE-DOMAIN / Tsuyoshi Kashiwazaki

Case No. D2018-1114

1. The Parties

The Complainant is Interbrand Group (“Interbrand”) of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lewis Silkin LLP, United Kingdom.

The Respondent is Whois Privacy Protection Service by VALUE-DOMAIN of Osaka, Japan / Tsuyoshi Kashiwazaki of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <interbrandfilehosting.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 in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2018. On May 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2018, 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 May 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding.

On May 25, 2018, the Complainant requested to suspend the proceeding. The Center informed the Parties that the proceeding was suspended until June 12, 2018. On June 12, 2018, the Complainant requested to reinstitute the proceeding and submitted an amended Complaint in which it requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 proceedings commenced on June 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2018.

The Center appointed Masato Dogauchi as the sole panelist in this matter on July 18, 2018. 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

Whereas the Respondent has not submitted any formal response, the following information from the Complaint is found to be the factual background of this case.

The Complainant is a branding and design agency. It has a number of offices around the world, including in Tokyo, and operates a number of website in various languages, including a Japanese language website at “www.interbrandjapan.com”. It makes announcements annually on its Best Global Brands as well as, at least, its local version in Japan as the Best Japan Brands.

The Complainant owns trade mark registrations for INTERBRAND in some jurisdictions, including European Union trade mark no. 000208496 registered on February 25, 2002 with respect to printed matter, business management assistance and consultancy services, etc. It also owns Japan trade mark no. 4047210 registered on August 22, 1997 with respect to creation, devising and planning of trade marks or trade names, inventory of stationary, etc.

The disputed domain name was registered by the Respondent on March 7, 2018 and resolves to a website promoting medical school preparatory courses.

5. Parties’ Contentions

A. Complainant

The Complainant has been famous in branding and design markets in numerous countries. The use of the domain name incorporating the trade mark, INTERBRAND, has become well recognized by customers as designating the Complainant.

The first part of the disputed domain name, “interbrand” is identical with the Complainant’s trade mark. The addition of generic dictionary words “file” and “hosting” does nothing to diminish confusion or to distinguish the disputed domain name from the Complainant’s INTERBRAND mark. Accordingly, the disputed domain name is identical or confusingly similar to the Complainant’s INTERBRAND mark.

The Respondent has never been commonly known by the disputed domain name before registering it. The Respondent is not making a legitimate or fair use of the disputed domain name. The contents hosted at the disputed domain name appear to promote medical school preparatory courses offered by two providers. The website also hosts webpage containing a tweet which contains a link forwarding Internet users onto a randomly generated ad campaign. Such use cannot qualify as bona fide, as the disputed domain name is being used as a pretext for commercial gain. Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The disputed domain name was once in fact used by the Complainant in its marketing materials. Despite the length of time since when the Complainant ceased to use it, the disputed domain name is still referenced by at least 37 other websites and/or users who are unaware that the website reached by the disputed domain name is no longer controlled by the Complainant. The Respondent appears to note the value of the disputed domain name in that it has potential to generate traffic to the Respondent’s website. Accordingly, 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.

6. Discussion and Findings

6.1. Language of Proceedings

In respect of the language to be used in the administrative proceeding, in accordance with the Rules, paragraph 11(a), the language of the administrative proceeding shall be, in principle, the language of the registration agreement. However, the proviso of the same provision allows the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Panel determines that the language of this proceeding shall be English rather than Japanese on the following grounds:

- The Complainant requested to that effect;

- The Respondent surely has become aware of this case filed by the Complainant, even if he/she just understand Japanese language, on the ground that he/she did not reply to the notification in both English and Japanese by the Center that the Respondent was invited to indicate its objection, if any, to the Complainant’s request for the language by the specified due date; and

- The text on the disputed domain name can be divided into four parts: “inter”, “brand”, “file”, “hosting”. Each part has a meaning in English but does not have any meaning in Japanese. In addition, no other divisions of the disputed domain name can be found, any part of which shows meaning connection to the Japanese language;

- The use of Japanese language would produce undue burden on the Complainant in consideration of the absence of a Response from the Respondent.

6.2. Substantive Matters

In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the following decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the Complainant.

In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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 is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the INTERBRAND trade mark.

The word “interbank” is found in the disputed domain name. The other parts of the dominant part of the disputed domain name can be meaningfully divided into two words, “file” and “hosting”. No other meaningful combination of words can be found. The addition of these dictionary words does nothing to diminish confusion or to distinguish the disputed domain name from the Complainant’s INTERBRAND mark.

The addition of the generic Top-Level Domain, “.com”, does not have any impact on the overall impression of the dominant portion of the words and is therefore irrelevant in the determination of the confusing similarity between the disputed domain name and the INTERBRAND trade mark.

Therefore, having considered the above combination of word, “interbrand” and “filehosting”, the Panel finds that the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights. The above requirement provided for in paragraph 4(a)(i) of the Policy is accordingly satisfied.

B. Rights or Legitimate Interests

There is no evidence at all that shows the Respondent is commonly known by the name “interbrand” or “interbrandfilehosting” and that the Respondent is affiliated with the Complainant, or authorized or licensed to use the INTERBRAND trade mark.

The contents hosted at the disputed domain name appear to promote medical school preparatory courses offered by two providers. The website also hosts webpage containing a tweet which contains a link forwarding Internet users onto a randomly generated advertisement campaign. It is highly likely that such use is just a pretext for commercial gain, because there found no reasonable relationship between the contents and the words contained in the disputed domain name.

Since the Respondent did not reply to the Complaint in this proceeding, the Panel finds on the available record that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The above requirement provided for in paragraph 4(a)(ii) of the Policy is accordingly satisfied.

C. Registered and Used in Bad Faith

The Complainant is a branding and design agency with a number of offices around the world, including Tokyo. It operates a number of website in various languages, including a Japanese language website at “www.interbrandjapan.com”.

In accordance with the witness statement of Aaron Newell dated June 8, 2018, a Google record shows the name of the Complainant has been referred approximately 171 times on the CNN website from as early as 2002 and approximately 409 times on the New York Times website from as early as 2008. Also the Complainant’s Global Best Brands report is frequently referred to on the Internet.

ln consideration of the Complainant’s business using the INTERBRAND trade mark, it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the trade mark at the time of the disputed domain name’s registration, which included the word “interbrand”. ln addition, in light of the fact that nothing in the disputed domain name bears a reasonable relevance to the name or other characteristics of the Respondent, there can be found no reasonable possibility of fortuity in the Respondent’s use of the disputed domain name.

Furthermore, since the disputed domain name was once in fact used by the Complainant in its marketing materials and it is still referred to by at least 37 other websites operated by those who are unaware that the website has no longer been controlled by the Complainant, it is highly likely that the Respondent knew, at the time of the registration of the disputed domain name, the value of the disputed domain name in that it has potential to generate traffic of many Internet users, and from this the Panel infers that the Respondent is doing so for commercial gain.

The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. The above requirement provided for in paragraph 4(a)(iii) of the Policy is accordingly satisfied.

ln conclusion, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are determined to be satisfied.

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 <interbrandfilehosting.com> be transferred to the Complainant.

Masato Dogauchi
Sole Panelist
Date: July 22, 2018