WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Olympus Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / Flash Webs
Case No. D2021-0382
1. The Parties
1.1 The Complainant is Olympus Corporation, Japan, represented by Bodman LLP, United States of America (“United States”).
1.2 The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Flash Webs, Cameroon.
2. The Domain Name and Registrar
2.1 The disputed domain name <olympuscusa.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2021. At that date the publicly available WhoIs data for the Domain Name recorded the registrant as the Registrar’s privacy service.
3.2 On February 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain name. On February 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the Domain Name. The Center sent an email communication to the Complainant on February 9, 2021 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 amendment to the Complaint on February 12, 2021.
3.3 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”).
3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2021.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 14, 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
4.1 The Complainant is based in Japan and is a well-known manufacturer of medical technologies, industrial solutions, life sciences products, and camera and audio products. Its revenues for the fiscal year ending on March 31, 2020 were JPY 797 billion. Its medical device sales in 2019 were USD 5.4 billion. The Complainant maintains offices in at least 37 countries throughout Asia, the Americas, Europe, and the Middle East.
4.2 The Complainant first started using the “Olympus” name in 1919 and is the owner of a very large number of registered trade marks around the world that comprise or incorporate the term “Olympus”. They include:
(i) United States registered trade mark No. 647456, registered on June 25, 1957 for OLYMPUS as a typed drawing in class 1; and
(ii) International trade mark registration No. 1140563, registered on March 8, 2012 and proceeding to grant in whole or in part in various territories including the European Union for OLYMPUS as a standard character mark in classes, 5, 9, 10, 11, 12, and/or 16.
4.3 The Complainant also operates websites from the domain names <olympus-global.com> and <olympusamerica.com>.
4.4 The Domain Name was registered on December 13, 2020. Since registration, it has been used to display a website that offers for sale various types of medical supplies and equipment. It takes the form of a cloned version of a website operated by a third party DiaMedical Equipment USA LLC (“DiaMedical”). The copying is extensive (even copying with modifications, the terms and conditions on that site) but with the following changes:
(i) Some (but not all) of DiaMedical trade marks have been replaced with the Complainant’s OLYMPUS marks;
(ii) The website claims to be operated by an Olympus subsidiary named Olympus Scientific Corp.
(iii) The contact address given is nearly identical to the address of the Complainant’s subsidiary in Olympus Scientific Solutions America, in Waltham, Massachusetts, United States.
4.5 In the initial belief that the website was operated by the Complainant, DiaMedical’s attorneys contacted the Complainant in late January 2021 demanding that it take down the website.
4.6 The Complainant’s attorneys sent a cease and desist letter to the Respondent on February 2, 2021 demanding that the Domain Name be transferred to the Complainant, but the Respondent failed to respond to that letter.
4.7 The name and address disclosed for the Domain Name by the Registrar is in a form that it is hard sensibly to interpret. In part, it appears to give an address in Gistrup, Denmark, but also identifies the relevant country to be Cameroon. It seems likely that the name and address given for the Domain Name is false.
4.8 At the date of this decision, the website operating from the Domain Name ceased to operate.
5. Parties’ Contentions
5.1 The Complainant describes its business, marks and the way in which the Domain Name has been used. It contends that the Domain Name is being used to impersonate the Complainant and to offer goods that infringe the Complainant’s trade marks. It claims that these products are likely to be counterfeit. It also contends that there is evidence to suggest that the Respondent is involved in other illegal activities, such as counterfeiting and phishing, but the nature of that evidence is not further described.
5.2 The Complainant contends that the Domain Name is confusingly similar to its registered trade marks and that the way that the Domain Name has been used demonstrates that the Respondent has no right or legitimate interest in the Domain Name and that the Domain Name has been registered and used in bad faith.
5.3 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Complainant has satisfied the Panel that it has registered trade rights for OLYMPUS in the form, inter alia, of a standard character mark. In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name”; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.5 The Domain Name can most sensibly be understood as the word “olympus”, the letter “c” and the letters “usa” (representing the United States) in combination with the “.com” generic Top-Level Domain. The Complainant’s mark is therefore clearly recognisable in the Domain Name.
6.6 The Complainant has, therefore, satisfied the Panel that the Domain Name is confusing similar to its trade mark and has thereby made out the requirements of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.7 It is usual for panels under the Policy to consider the issues of rights or legitimate interests, and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.
6.8 The Complainant contends that the Domain Name has been registered and is being used to falsely and fraudulently impersonate the Complainant, most likely with a view to selling counterfeit goods. If that is so, the Complainant’s case succeeds. There are no rights or legitimate interests in holding a domain name for the purpose of engaging in such fraudulent impersonation. Further, the registration and use of a domain name for such a purpose involves registration and use in bad faith (see, for example, Weber-Stephen Products LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Daniela Gebauer, Kitchenhelpers GmbH, WIPO Case No. D2017-0118).
6.8 The Panel accepts that the Domain Name was indeed registered and is being used for the purpose of fraudulently impersonating the Complainant. That is abundantly clear from the website that operated from the Domain Name. This can only be sensibly understood as making deliberately false representations that it is operated by a company within the Complainant group of companies and that it is this company within the Complainant group that is offering for sale the various goods displayed on the site.
6.9 In the circumstances, the Complainant has made out the requirement of paragraph 4(a)(ii) and 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <olympuscusa.com> be transferred to the Complainant.
Matthew S. Harris
Date: March 24, 2021