|Kläger||Oki Data Americas, Inc.|
|Entscheider||Richard, Hugues G.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oki Data Americas, Inc. v. Albert Jackson
Case No. D2004-0087
1. The Parties
The Complainant is Oki Data Americas, Inc., of Mount Laurel, New Jersey, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.
The Respondent is Albert Jackson, located in George Town, Grand Cayman, Cayman Island, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <okidataprinter.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2004. On February 3, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On February 4, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 proceedings commenced on February 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 29, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on March 1, 2004.
The Center appointed Hugues G. Richard as the Sole Panelist in this matter on March 10, 2004. 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
Oki Data (or its predecessors in title) has since December 15, 1972, used the name and mark OKIDATA in the United States and around the world for computer programs, facsimile machines, printers and parts thereof. Oki Data has been and continues to be engaged, as a global leader in the manufacture and sale of computer peripherals and accessories, in the development, manufacture and sale of a full line of computer printers and parts therefor.
The OKIDATA mark was registered with the United States Patent and Trademark Office for "computer programs, printers, and parts thereof" (U.S. Registration No. 1,336,348) on May 21, 1985. Oki Data has used and continues to use the mark in the United States under the direction and control of a related company, Oki Electric Industry Co., Ltd. Oki Data is the exclusive licensee under the OKIDATA mark of Oki Electric Industry Co., Ltd., and has the right to use the mark and enforce its rights in the United States.
Oki Data has registered many domain names incorporating its trademark and name OKIDATA, including the following: "OKIDATA": <okidata.com>, <okidata.net>, <okidata.cl>, <okidata.com.mx>, <okidata.com.bo>, <okidata.com.ar>, <okidata.com.br>, <okidata.com.pr>, <okidatafax.com>, and <okidataservice.com>.
Oki Data has spent millions of dollars promoting the OKIDATA mark and name in advertising and marketing its products and services, and particularly on its Websites.
On or about April 20, 2003, Respondent registered the domain name <okidataprinter.com> with DotRegistrar.com.
On or around November 13, 2003, Oki Data became aware of the domain name <okidataprinter.com>. At that time, the domain name resolved to a Website portal that promoted various services and goods, including online gambling, Viagra, and dating services, in addition to links to sources of printers other than Oki Data. Furthermore, access to the Website placed the user in a "mouse-trap" of pop-up advertisements for various products and services unrelated to Oki Data or its goods and services.
Oki Data recently confirmed that if users type in the <okidataprinter.com> as an Internet domain name, they would be sent to a Web page that contains references to various sources of printers other than Oki Data, where numerous pop-up advertisements promoting online dating, gambling, and mortgage services mouse-trap the user until all the pop-up windows are closed.
On November 20, 2003, counsel for Oki Data sent a cease and desist letter to Respondent, which demanded that the domain registration be promptly transferred to Oki Data. After receiving no response to the cease and desist letter, counsel for Oki Data sent a follow-up letter to Respondent on December 9, 2003. Despite Oki Datas repeated attempts, Respondent has not responded to either of the letters. To date, no communication was ever received by Oki Data.
5. Parties Contentions
Identical or Confusingly similar
Respondents <okidataprinter.com> domain name incorporates Oki Datas famous OKIDATA mark in its entirety. The only difference is the addition of the generic term "printer," which has no source-identifying function to Oki Datas registered mark. The domain name is thus confusingly similar to the OKIDATA mark.
Rights and Legitimate Interests
Respondent has no legitimate interest in or business purpose for the domain name <okidataprinter.com>, which resolves to a commercial Web Portal. The only interest Respondent has is an illegitimate one to exploit Oki Datas goodwill in its mark to attract users to Respondents site.
The domain name should be considered as having been registered and used in bad faith because Respondent had constructive notice that the OKIDATA mark was a registered trademark belonging exclusively to Oki Data. Moreover, by registering the domain name, Respondent has precluded Oki Data from using its mark in a corresponding domain name.
Oki Data has not agreed or consented to or licensed Respondents use or registration of a domain name containing its mark. Respondent is not using the domain name for any bona fide business purpose.
Furthermore, Respondents failure to use the domain name for any legitimate purpose weighs in favor of finding bad faith.
In addition, inactivity by a registrant can amount to bad faith use of a domain name. Respondents infringing Domain Name links to a Web page in which there are no real content or bona fide activity. It only is a "lure" to attract users into a mouse-trap for unwanted pop-up advertisements.
The Respondent did not reply to the Complainants contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is of the opinion that the evidence as submitted by Complainant supports a finding that Complainant has rights in the trademark OKIDATA.
While the domain name is not identical to Complainants OKIDATA mark considered alone, the Panel finds that it is confusingly similar, since the domain name is in fact comprised of the mark to which has been added the generic term "printer." The test of confusion in comparing the words or marks at issue is from the standpoint of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.
See Maruti Udyog Limited v. Maruti Software Private Limited, WIPO Case No. D2000-1038. It has been consistently held that the addition of a non-source identifying element to a trademark in a domain name does not eliminate likelihood of confusion. See The Rockport Co. LLC v. Powell, WIPO Case No. D2000-0064; RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242; Reuters Ltd. v. "Domain for Sale," WIPO Case No. D2000-1110.
The Panel therefore finds that Complainant has satisfactorily met the burden imposed upon it at Policy Paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the domain dame. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.
The Panel agrees with Complainants contention that Respondent has no rights or legitimate interests in the domain names.
First, there is no relationship between the parties giving rise to any license, permission, or other right by which Respondent could own or use any domain names incorporating Complainants mark.
Second, the Panel finds that there is no evidence that Respondent has been commonly known by the domain name, nor that the domain name comprises the legal name of Respondent. In fact, when typing in the domain name, the Internet user is automatically directed to a website leading to several hyperlinks to websites of Complainants competitors or websites which provide advertisements for or links to Complainants competitors, it is the Panels opinion that the Respondent has not been commonly known by the domain name.
Third, the fact that the Respondent uses the domain name to divert Internet users for its own benefit and profit to its portal website is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain names. The Panel relies on the findings expressed in America On-Line, Inc. v. Ten Cent Comm. Corp., NAF Case No. 93668 wherein it was found that use of Complainants mark "as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate."
Moreover, in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" WIPO Case No. D2000-0847, the panel observed that, "use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy." In Advance Magazine Publishers, Inc. v. Lisa Whaley, WIPO Case No. D2001-0248, the panel construed this to mean that "intentionally infringing use should not be viewed as bona fide use."
Fourth, the Panel finds a negative inference from Respondents failure to respond which points to corroborate the evidence submitted by Complainant that Respondent lacks rights or legitimate interests in the disputed domain names. In this regard, the Panel refers to Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648. The Panel is of the opinion that, once lack of legitimate rights or interests has been alleged by a complainant, the respondent is obliged to adequately address this issue. This finding is supported by the various means, which are available to a respondent under the Policy to show legitimate right or interest, on a balance of probabilities.
Therefore, the Panel, relying on MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205, wherein it was stated that "The Administrative Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the respondents failure to respond to this administrative proceeding, that the complainant is correct in its assertion that the respondent has no rights or legitimate interest in the domain name" finds that the complainant has established prima facie that the respondent lacks rights or legitimate interests and therefore has successfully met its second burden, under Policy paragraph 4(a)(ii). See also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 wherein it was found that: "Respondents failure to respond can be construed as an admission that they have no legitimate interest in the domain names."
The Panel thus finds that Complainant has met its burden under Policy Paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
It is often quite difficult to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once the Complainant has presented some evidence pointing in that direction, it is then incumbent upon the Respondent to either respond or explain why its conduct should not be assimilated to bad faith.
The Panels understanding of the Policy is that although the initial burden to prove the Respondents bad faith in the registration or the use of the disputed domain name relies squarely on the shoulders of the Complainant and once it has done so, as it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw negative inferences.
In the present case, the Panel finds that, since Complainants trademark OKIDATA is federally registered, it is very unlikely that when Respondent registered the domain names, it was not aware that it was infringing on Complainants trademark rights (see e.g. Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). See also Digi Intl v. Digi Sys, NAF Case No. 124506 wherein it was held that there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainants trademarks, actually or constrictively.
Furthermore, the Panel is of the opinion that the domain name is so obviously connected with Complainants trademarks that its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Moreover, the Panel finds that the evidence tends to demonstrate that Respondent registered the domain name with the purpose of intentionally attempting to attract, for its own commercial benefit, Internet users to its website by creating a likelihood of confusion with Complainants trademark and by using the goodwill and positive reputation attached to the Complainants OKIDATA trademark. See Snapple Beverage Corp. v. Telmex Management Services, WIPO Case No. D2002-0114.
Finally, the Panel took note of the fact that several UDRP complaints have been filed against the Respondent; these decisions, absent evidence to the contrary by Respondent, tend to indicate a pattern by which the Respondent initially registers domain names comprising trademarks or variations of trademarks for which he has no rights, and then links the domain names to websites that directly compete with the owners of the trademarks or that tarnish the goodwill associated with the trademarks.
As in these other UDRP cases, in this case Respondent has registered a domain name that is a close variation of famous trademarks. Respondent has linked this domain name to a website that is likely to confuse the Internet user as to the distinction between Complainant and Respondents goods and services, whatever they may be. Respondent also uses the domain name in a manner that tarnishes the goodwill associated with the Complainant and its service mark.
In view of all the above, the Panel is of the opinion that the Complainant has discharged of its burden under Policy paragraph 4(a)(iii), and finds that the Respondent has registered and used the domain names in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <okidataprinter.com> be transferred to the Complainant.
Hugues G. Richard
Dated: March 24, 2004