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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Casio Computer Co., Ltd v. Zong Rong Shen

Case No. DCC2013-0001

1. The Parties

The Complainant is Casio Computer Co., Ltd of Tokyo, Japan, represented internally.

The Respondent is Zong Rong Shen of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <casio.cc> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2013. On February 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2013, 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 Respondent sent informal email communications in Chinese to the Center on February 19, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2013.

The Respondent sent further email communications in Chinese to the Center on February 27, 2013. Upon the Complainant’s request, the Center notified the parties of the suspension of the proceeding on March 4, 2013. Upon the Complainant’s request, the Center notified the parties of the reinstitution of the proceeding on March 6, 2013.

The Respondent did not submit any formal Response. Accordingly, the Center sent the parties a proceeding update on March 18, 2013.

The Respondent sent email communications in Chinese to the Center on March 19, 2013.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 26, 2013. 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

A. Complainant

The Complainant is a company incorporated in Japan and the owner of over 1,430 registrations worldwide for the trade mark CASIO (the “Trade Mark”), the earliest apparently dating from the early 1970s, including numerous registrations in China, where the Respondent is based. The Trade Mark is a well-known trade mark.

B. Respondent

The Respondent is an individual apparently with an address in China.

C. The Disputed Domain Name

The disputed domain name was registered on August 26, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint:

The Complainant is famous worldwide for its calculators, cameras, watches and other electrical devices sold under the Trade Mark. The Complainant’s total sales in 2012 were 301,660 million JPY and its total number of employees in 2012 was 11,663.

The Trade Mark has been recognised in Japan and in China as a well-known trade mark.

The Complainant sells its watches under the Trade Mark in China only via authorised retailers.

The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name.

The Respondent has been using the disputed domain name in respect of an unauthorised website offering for sale watches under the Trade Mark (the “Website”).

After the Complainant sent a letter of demand to the Respondent, the Website was taken down, and the Respondent responded by asking the Complainant to make an offer to purchase the disputed domain name. The disputed domain name is currently linked to a “page cannot be found” website. It has also been listed for sale on the Sedo Domain Marketplace website at “www.sedo.com”.

For all of these reasons, 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

The Registrar has confirmed that the language of the proceeding is English. The Panel has taken into consideration the Chinese email communications from the Respondent, but will render its decision in English pursuant to paragraph 11(a) of the Rules.

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by several decades.

The Panel finds that the disputed domain name, which contains the Trade Mark in its entirety, is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii)the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by decades. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, there is evidence that the disputed domain name has been used in respect of the Website which features prominently the Trade Mark, which is a well-known trade mark, and offers for sale watches under the Trade Mark. In all the circumstances of this case, such use does not amount to a bona fide offering of goods or services under the Policy.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Trade Mark is a well-known trade mark worldwide and in particular in China, where the Respondent is based. The Respondent has used the Website, without the authorisation of the Complainant, to offer for sale watches under the Trade Mark.

In the circumstances, and given in particular the notoriety of the Trade Mark, the Panel has no hesitation in concluding the Respondent has registered and used the disputed domain name in order to pass off the Website as a website of or licensed by the Complainant, for commercial gain.

Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

Circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

Although there is no evidence as to the price the Respondent is seeking for the disputed domain name, the Respondent has listed the disputed domain name for sale on the Sedo website, and has also asked the Complainant to make an offer for the purchase of the disputed domain name. In all the circumstances, the Panel is willing to infer that the Respondent is offering the disputed domain name for sale for a price exceeding the Respondent’s out-of-pocket expenses incurred in registering the disputed domain name.

The disputed domain name is currently linked to a “page cannot be found” website. In all the circumstances of this case, the Panel finds this constitutes further evidence of bad faith.

For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 <casio.cc> be transferred to the Complainant.

Sebastian M. W. Hughes
Sole Panelist
Dated: April 9, 2013

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