WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
パナソニック株式会社（Panasonic Corporation） v. Justone zhu
Case No. D2019-1546
1. The Parties
The Complainant is パナソニック株式会社（Panasonic Corporation）, Japan, represented by Midorinomori Law Office, Japan.
The Respondent is Justone zhu, China.
2. The Domain Name and Registrar
The disputed domain name <panasonic.press> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in Japanese with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2019. On July 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2019, 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 July 8, 2019 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 in Japanese on July 12, 2019.
On July 8, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On July 10, 2019, the Complainant confirmed its request that Japanese 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 July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2019.
The Center appointed Douglas Clark as the sole panelist in this matter on August 23, 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, founded in 1918 by Kōnosuke Matsushita, is a Japanese multinational electronics corporation with its headquarters in Osaka, Japan. The Complainant manufactures and sells a wide range of electronic products under the trademark PANASONIC.
The Complainant is also the owner of “PANASONIC” trademark in Japan under Trademark Registration No. 3116238, registered on January 31, 1996.
The Respondent is an individual based in China.
The disputed domain name was registered on July 20, 2018 and originally resolved to an online platform written in Japanese offering for sale a variety of electric and home care products. The trademark PANASONIC was displayed prominently at the top of the home page. The disputed domain name now resolves to a webpage where it appears to be a page advertising Microsoft and Windows Servers.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or Confusingly Similar
The Complainant contends that the disputed domain name <panasonic.press > and the trademark PANASONIC are identical or confusingly similar. The disputed domain name contains PANASONIC in its entirety as the distinctive part of the disputed domain name. The Top-Level Domain “.press” means advertising and should be disregard when making a comparison. Further the website under the disputed domain name could be confused to be a website of the Complainant.
No rights or legitimate Interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for PANASONIC. Further the use of the disputed domain name to sell products is not for non-commercial purposes. The Respondent is not commonly known by the name “Panasonic”. The Respondent, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Respondent is using the website under the disputed domain name to sell electric products and confuse consumers as to some association with the Complainant. Accordingly, the disputed domain name has been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Language of the Registration Agreement for the disputed domain name is in English.
The Complainant requests that the language of the proceeding be Japanese on the grounds that the disputed domain name contains a Japanese brand, and that the website under the disputed domain name targeted Japanese users in the Japanese market because the website was written in the Japanese language.
The Respondent did not respond to this request nor otherwise comment on the language of the proceeding.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise 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 Center made a preliminary determination to:
1) accept the Complaint and the amended Complaint as filed in Japanese;
2) accept a Response in either Japanese or English;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination.
The website under the disputed domain was written entirely in Japanese. From this fact it is clear the Respondent understands Japanese. The Panel (which is familiar with Japanese and English) therefore accepts the Complaint and the amended Complaint as filed in Japanese.
Given the language of the Registration Agreement for the disputed domain name is in English, the Panel will render its decision in English.
6.2 Substantive Issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the policy have been satisfied:
(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 is being use in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <panasonic.press>, other than the generic Top-level Domain (“gTLD”) “.press”, is identical to the Complainant’s trademark. The gTLD is normally ignored when considering identity or confusing similarity. The disputed domain name incorporates the Complainant’s PANASONIC mark in its entirety.
The disputed domain name is therefore identical to the Complainant’s registered trademark.
The Complainant on relies on its trademark registration for PANASONIC in Japan and has not relied on a registration in China. However, The Panel notes that 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0”)).
The first element of paragraph 4(a) of the Policy is therefore 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 is internationally well known. The Respondent has no business or any kind of relationships (licensor, distributor) with the Complainant.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Considering the absence of a response by the Respondent and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any 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 <panasonic.press> was registered in bad faith and is being used in bad faith.
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <panasonic.press> was registered in bad faith and is being used in bad faith. The Respondent clearly knew of the Complainant when it registered the disputed domain name, as it comprises the entirety of the Complainant’s trade name and trademark, which serves as strong evidence of the Respondent’s knowledge especially when the word “panasonic” itself has no meaning other than to serve as the Complainant’s trade name or trademark.
The website under the disputed domain name at the time of the filing of the Complaint also bore the PANASONIC trademark and was an online platform selling electric appliances and home care products. The goods for sale on the website under the disputed domain name showed that the Respondent was attempting to make a commercial gain from the website by attracting users to purchase the items. The Panel finds that this constitutes evidence of registration and use of a domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
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 <panasonic.press> be transferred to the Complainant.
Date: September 6, 2019