WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ORIX Kabushiki Kaisha v. Damien Ferte, ABACARE
Case No. D2021-0118
1. The Parties
The Complainant is ORIX Kabushiki Kaisha, Japan, represented by HFG Law, China.
The Respondent is Damien Ferte, ABACARE, China.
2. The Domain Name and Registrar
The disputed domain name <orixinsurance.com> (hereafter the “Disputed Domain Name”) is registered with CTS Computers and Telecommunications Systems dba Magic Online (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2021. On January 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 20, 2021, 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 January 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent an email communication in both French and English regarding the language of the proceeding on the same day. The Complainant replied on January 22, 2021 requesting English to be the language of the proceeding and the Respondent did not submit any comments. The Complainant filed an amendment to the Complaint on January 22, 2021.
The Center verified that the Complaint together with the amendment to 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 in both English and in French, and the proceedings commenced on January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2021.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 24, 2021. 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, ORIX Kabushiki Kaisha (translated “ORIX Corporation” in English), is part of a Japanese group of companies offering a wide range of financial services including life insurance.
The Complainant’s group is active worldwide and was ranked 292th in the Forbes Global 2000 ranking for the year 2020, listing the world’s largest public companies in terms of sales, profits, assets and market value.
The Complainant owns numerous trademark registrations corresponding to or including the word ORIX, such as the following:
- ORIX (word mark), Japanese Trademark registration No. 2240320 registered on June 28, 1990, in classes 1, 5, 9, 10 and 12;
- (figurative mark), International Trademark registration No. 854905 registered on June 15, 2004 in classes 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, and covering various countries including China where the Respondent is located;
The Disputed Domain Name was registered on November 1, 2007. According to the current Registrar, the Disputed Domain Name was transferred from the previous registrar on September 28, 2015.
According to an undated screen print provided by the Complainant, it appears that the Disputed Domain Name used to resolve to a website offering insurance services and mentioning “WE ARE ORIX” and “Orix Insurance”. The Disputed Domain Name currently redirects to the domain name <clema-rs.com>. The website linked to this domain name appears to offer insurance services.
5. Parties’ Contentions
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent registered the Disputed Domain Name with full knowledge of the reputation of the Complainant’s trademark and the use the Disputed Domain Name causes confusion with and tarnishes the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue: Language of proceedings
Pursuant to the Rules, Paragraph 11, in the absence of an agreement between 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.
According to information received from the Registrar, the language of the registration agreement for the Disputed Domain Name is French. The Complaint has been submitted in English.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include:
- evidence showing that the respondent can understand the language of the complaint;
- potential unfairness or unwarranted delay in ordering the complainant to translate the complaint;
- other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
On UDRP panel appointment, both parties’ arguments are provided to the UDRP panel for its determination as to the language of proceedings. This may include accepting the complaint as filed, and a response in the language of the registration agreement, thereby seeking to give both parties a fair opportunity to present their case (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant requested that English be the language of the proceedings, including for the following reasons:
- it would be beneficial for both parties;
- all content of the website linked to the Disputed Domain Name is in English.
The Panel observes that the Respondent was made aware of the present proceedings and further informed of the procedure with both English and French communications from the Center. By accepting the terms and conditions of the registration agreement in French and by the Center’s bilingual communications, the Panel finds that the Respondent was sufficiently informed about the content of these administrative proceedings. The fact that the Respondent did not reply to any of the communications sent by the Center indicates that the Respondent deliberately opted for not taking part in the proceedings and chose not to use its right to defend itself. Moreover, the content of the website linked to the Disputed Domain Name indeed indicates that the Respondent understands English.
In such circumstances, the Panel finds that it would be a disadvantage for the Complainant to be forced to translate the Complaint. As the Respondent had ample chance to defend itself but elected not to do so, the rights of the Respondent to defend itself and the right to equal treatment are guaranteed (see INTS IT IS NOT THE SAME, GmbH (dba DESIGUAL) v. Two B Seller, Estelle Belouzard, WIPO Case No. D2011-1978).
For these reasons and given the circumstances of this case as further explained below, the Panel determines that the language of the proceedings is English.
6.2 Substantive elements of the Policy
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out his case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark 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.
The Panel will therefore deal with each of these requirements.
A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s ORIX trademark has been registered and is being used in various countries in connection to the Complainant’s financial services.
The assessment of identity or confusing similarity involves comparing the Disputed Domain Name and the textual components of the Complainant’s mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element (see section 1.10 of the WIPO Overview 3.0).
The Disputed Domain Name incorporates the Complainant’s ORIX word mark in its entirety, simply adding the term “insurance”. ORIX is also the textual component of some of the Complainant’s figurative marks. Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other (descriptive) terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0).
Additionally, it is well-established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s ORIX trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).
The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “Damien Ferte”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed.
Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s ORIX trademark and adds the word “insurance”, which is descriptive and could be considered to refer to the Complainant’s insurance services. Therefore, the Panel finds that the Disputed Domain Name carries a high risk of implied affiliation with the Complainant and cannot constitute fair use.
Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).
Based on the evidence provided by the Complainant, the Panel observes that the website to which the Disputed Domain Name redirects seems to offer services similar to the Complainant’s insurance services. Moreover, the “About us” page of this website also mentions the Complainant’s mark by stating that the insurance services are offered by “Clema Risk Solutions (formerly Orix Insurance)”. In the Panel’s view, this also suggests a link with the Complainant and does not amount to a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In the present case, the Panel finds that it is more likely than not that the Respondent was aware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Complainant provides evidence of various trademarks applied for and registered since the 1990’s in China, where the Respondent is located. Previous UDRP panels have also confirmed the distinctiveness and international reputation of the Complainant’s mark (see ORIX Kabushiki Kaisha v. WhoisGuard Protected, WhoisGuard, Inc. / James W.Ford, RBTC, WIPO Case No. D2017-2568; Orix Kabushiki Kaisha v. Noldc Inc., WIPO Case No. D2006-0422).
The Disputed Domain Name includes the Complainant’s distinctive trademark in its entirety, and the website linked to the Disputed Domain Name offers services similar to the Complainant’s services. In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
The Disputed Domain Name is used to redirect to a website offering services similar to the Complainant’s services, namely insurance services. Moreover, the Panel observes that according to the evidence provided by the Complainant, the company offering the insurance services on this website appears to have changed its name. The Disputed Domain Name used to refer to a website promoting insurance services under the name “Orix Insurance” and subsequently redirected to another domain name <clema-rs.com>. The website linked to <clema-rs.com> is nearly identical to the “Orix Insurance” website but the services are now offered under the name “Clema Risk Solutions”. The “About us” page of the website still mentions that “Clema Risk Solutions” was formerly known as “Orix Insurance”. In the Panel’s view, this indicates that the Respondent has intentionally attempted (and continues) to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.
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 <orixinsurance.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Date: March 10, 2021