WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nissan Chemical Corporation v. Cash Mone, Bestinrnarknet
Case No. D2019-0699
1. The Parties
The Complainant is Nissan Chemical Corporation of Tokyo, Japan, represented by The GigaLaw Firm, United States of America (“United States”).
The Respondent is Cash Mone, Bestinrnarknet of Kampala, Uganda.
2. The Domain Name and Registrar
The disputed domain name <nissancham.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2019, 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.
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 of the Complaint, and the proceedings commenced on April 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2019.
The Center appointed Douglas Clark as the sole panelist in this matter on April 30, 2019. 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 was established in 1887 as Japan’s first chemical fertilizer manufacturer in the name of Tokyo Jinzo Hiryo. Its corporate name was changed to “Nissan Chemical Industries, Ltd.” in 1937 and then to “Nissan Chemical Corporation” in 2018. The Complainant has established numerous entities worldwide containing the “Nissan Chemical” name. It engages in a wide range of business segments that include chemical, performance materials, agricultural chemicals and pharmaceuticals.
The Complainant owns two trademark registrations in Japan consisting the word NISSANCHEM for use in connection with, inter alia, chemicals and chemical machinery, both registered on March 13, 2015 (see, for example, registration no. 5748519). It is also the registrant of and uses multiple domain names that consist of or include the name “nissanchem”, including <nissanchem.co.jp> registered on March 22, 1996.
The disputed domain name was registered by the Respondent on October 14, 2018. The disputed domain name currently resolves to an inactive website. Between November 1, 2018 and January 15, 2019, one Mr. Kojiro Kinoshita who claimed to be from Nissan Chemical Industries, Ltd. has sent multiple emails to the Complainant’s customers and people associated with the Complainant, using an email with the disputed domain name, namely “email@example.com”, attempting to obtain products and payments.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to its NISSANCHEM trademark. The disputed domain name incorporates NISSANCHEM in its entirety, except the letter “e” in the word “chem” is replaced by the letter “a”. Even with the single letter substitution in the disputed domain name, the NISSANCHEM trademark is still recognizable and remains the dominant or principal component of the disputed domain name. The overall impression of the designation of <nissancham.com> is one of being connected to the NISSANCHEM trademark.
No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and cannot rely on any of the circumstances set out in paragraph 4(c)(i), (ii) and (iii) of the Policy.
The Complainant first used the “Nissan Chemical” name as early as 1937. Its domain name <nissanchem.co.jp> was registered in 1996 and the NISSANCHEM trademark in 2015. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the NISSANCHEM trademark in any manner. There is simply no commercial relationship between the Complainant and the Respondent.
The Respondent is using the disputed domain name to impersonate the Complainant by sending emails to the Complainant’s customers and others associated with the Complainant for fraudulent purposes of attempting to obtain products and payments. The Respondent is passively holding the website to which the disputed domain name resolves. Such conduct is not a bona fide offering of goods or services and the Respondent cannot rely on paragraph 4(c)(i) of the Policy.
The Complainant submits that the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in it. Further, given the Complainant’s long history of the use of the “Nissan Chemical” name, its significant international presence and brand recognition, it is impossible that the Respondent is commonly known by the NISSANCHEM trademark. The Complainant further contends that the Respondent is making an illegitimate, commercial and unfair use of the disputed domain name with the intent for commercial gain to misleadingly divert consumers. The Respondent therefore cannot rely on paragraph 4(c)(ii) and (iii) of the Policy.
Registered and used in bad faith
The Complainant contends that the Respondent’s use of the disputed domain name in emails to impersonate the Complainant shows that the Respondent registered and used the disputed domain name in bad faith. The Respondent’s conduct amounts to typosquatting which confuses users seeking or expecting the Complainant, which is further evidence of bad faith. Further, given the fame of the Complainant’s “Nissan Chemical” name, it is implausible that the Respondent was unaware of the Complainant when the disputed domain name was registered.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 differs from the NISSANCHEM trademark only by the change of a single vowel – the substitution of the letter “a” for the letter “e”. Such a change does not significantly change the appearance or the pronunciation of the relevant trademark. The disputed domain name is clearly an obvious and intentional misspelling of the NISSANCHEM trademark and the mark is still recognizable in the disputed domain name. The disputed domain name is, therefore, confusingly similar to the NISSANCHEM trademark (see section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel notes that the Complainant does not have a registered trademark for NISSANCHEM in Uganda where the Respondent is based. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of the WIPO Overview 3.0).
Accordingly, the first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
“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 Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
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 has been registered in bad faith and is being used in bad faith.
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 online 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’s use of the disputed domain name in an email address, which has been used to obtain products and payments, is a clear attempt to profit from and exploit the Complainant’s NISSANCHEM trademark.
Further, it is well-settled under the Policy that the practice of typosquatting with regards to a famous or widely-known trademark by an unaffiliated entity signals an intention on the part of the respondent to confuse users seeking or expecting the complainant and can by itself create a presumption of bad faith (see WIPO Overview 3.0, sections 1.9 and 3.1.4).
The third element of 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 <nissancham.com> be transferred to the Complainant.
Date: May 20, 2019