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WIPO-UDRP Decision
D2013-2202

Case number
D2013-2202
Complainant
Panasonic Corporation
Respondent
Pan shun
Panelist
Nahm, Ho-Hyun
Status
Closed
Decision
Transfer
Date of Decision
29.01.2014

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Panasonic Corporation v. Pan shun

Case No. D2013-2202

1. The Parties

The Complainant is Panasonic Corporation of Kadoma-shi, Osaka, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Pan shun of Fuzhou, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <panasonicjapan.biz> and <panasonicjapan.com> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2013. On December 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 20, 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 Complainant filed an amended Complaint on December 23, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on December 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2014.

The Center appointed Ho-Hyun Nahm, Esq. as the sole panelist in this matter on January 24, 2014. 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 owns trademark registrations for the mark PANASONIC as follows:

Trademark registration with the Unites States Patent and Trademark Office (USPTO)

Trademark: PANASONIC

Registration number: 640961

Registration date: February 5, 1957

Classes and goods: 7, 9, 11, 12, and 15; loud speakers, microphones and other public address systems.

Community Trade Mark (CTM) registration

Trademark: PANASONIC

Registration number: 556621

Registration date: March 29, 1999

Classes and goods: 38; telecommunications, electronic mail, multimedia information exchange networks and advertising goods and services using a worldwide computer network, etc.: 42; data processing computer networks giving direct access to information and services in the field of data processing, finance, travel, etc.

The Respondent registered the disputed domain names on July 1, 2013.

5. Parties’ Contentions

A. Complainant

(i) the disputed domain names are confusingly similar to the Complainant’s registered trademark PANASONIC in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint); see also Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 0095095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).

A. Identical or Confusingly Similar

The Complainant contends that it is a Japanese multinational electronics corporation headquartered in Osaka, Japan and that it was founded in 1918 and has grown to become one of Japan’s and the world’s leading electronics company.

The Complainant has provided sufficient evidence showing that it is the owner of the PANASONIC mark the registration of which predates the Respondent’s registration of the disputed domain names. The Complainant contends that it is the owner of trademark registrations with the USPTO for the PANASONIC mark (Reg. No. 640961, registered on February 5, 1957), CTM trademark registration for the PANASONIC mark (Reg. No. 556621, registered on March 29, 1999) and many other trademark registrations of or including the mark PANASONIC. Annex 4 to the Complaint.

The Panel notes that the Respondent appears to reside and operate in China. However, the Panel finds that Policy, paragraph 4(a)(i) does not require the Complainant to register its mark in the country in which the Respondent operates, so long as the Complainant registers the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., WIPO Case No. D2001-0217 (finding that the Policy does not require that the mark be registered in the country in which respondent operates and it is sufficient that complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that the Complainant’s registration of the PANASONIC mark with the USPTO and its CTM registrations for the same mark sufficiently establish its rights in the mark pursuant to Policy, paragraph 4(a)(i). See Metropolitan Life Insurance Company v. Robert Bonds, NAF Claim No.0873143 (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy, paragraph 4(a)(i)).

The Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s mark.

The Panel notes that the Respondent adds the geographical identifier “Japan” to the Complainant’s PANASONIC mark in the disputed domain names. The Panel holds that the Respondent’s addition of a geographical identifier does not distinguish the disputed domain names from the Complainant’s mark under Policy, paragraph 4(a)(i).

The Panel holds that each of the disputed domain names is confusingly similar to the Complainant’s mark PANASONIC especially in that they incorporate the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.”

The Panel also finds that the “.com” and “.biz” are descriptive suffixes commonly used as a generic Top-Level Domain (gTLD), and thus they do not constitute a prominent portion in the disputed domain names in determining confusing similarity between the disputed domain names and the Complainant’s mark. Therefore, the addition of the gTLD suffixes “.com” and “.biz” in the disputed domain names does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.”

As such, the Panel concludes that each of the disputed domain names is confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names under the Policy, paragraph 4(a)(ii), and then the burden shifts to the Respondent to demonstrate it does have rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant asserts that it has never granted any license or other permission to the Respondent to use the Complainant’s mark. The Complainant consequently submits that to the best of its knowledge, the Respondent is not commonly known by the disputed domain names.

The Panel finds that the Respondent has no connection or affiliation with the Complainant or its marks and has not received any license or consent, express or implied, to use the PANASONIC mark in the disputed domain names or in any other manner. The Panel further finds that on the available record, it has been established that the Respondent has never been known by the disputed domain names. Therefore, the Panel agrees that the Respondent lacks rights or legitimate interests in the disputed domain names. See Harry Winston, Inc. and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to the Policy, paragraph 4(c)(ii) in the <harrywinstondiamond.com> domain name where there was no evidence that the respondent was commonly known by the domain name); see also Alstom v. Yulei, WIPO Case No. D2007-0424 (finding that respondent had not established rights or legitimate interests in the domain name where there is no indication that respondent is commonly known by the <alstom-china.com> domain name and/or is using the domain name in connection with a bona fide offering of goods or services).

The Complainant contends that the disputed domain names resolve to very similar websites selling good branded Panasonic by submitting screen shots as shown in Annexes 5 and 6 to the Complaint. The Complainant submits that the authenticity of the Panasonic branded products cannot be verified, and what’s more, it is strongly believed that the disputed domain names have been registered to support a scam targeting people looking for Panasonic branded and reputed products. The Complainant also asserts that the use of the disputed domain names is neither legitimate nor noncommercial. The Panel agrees that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services and that nor is such use a legitimate noncommercial or fair use.

Under the circumstance that the Respondent did not reply and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, the Panel concludes that the second element of the Policy, paragraph 4 has been established. (See De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701).

C. Registered and Used in Bad Faith

The Complainant contends that the disputed domain names are being used to offer for sale Panasonic branded products which are not believed to have originated from the Complainant and which are therefore likely to be fakes. It further contends that it is very likely that the Respondent is receiving or trying to benefit as a result of the confusion and by the sale of apparently counterfeit products. In the absence of the Respondent’s refuting, the Panel finds that the websites resolved by the disputed domain names in such a manner constitute bad faith use.

The Complainant contends that it is a Japanese multinational electronics corporation headquartered in Osaka and was founded in 1918 and has grown to become one of Japan’s and the world’s leading electronics company. The Panel agrees that the Complainant’s PANASONIC mark has become famous and well-known in Japan and worldwide.

In light of the well-known status of the Complainant’s PANASONIC mark, established well before the registration date of the disputed domain names, the Panel infers that the Respondent registered the disputed domain names with the knowledge of the Complainant’s rights in the PANASONIC mark. The Panel finds that it is inconceivable that the Respondent was unaware of the Complainant’s rights in the PANASONIC mark, in that it is unlikely that the Respondent would have registered the disputed domain names unless it was aware of the existence of the trademark PANASONIC and that the disputed domain names might be of some type of economic advantage to the Respondent. (See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517).

The Panel notes that the notoriety of the Complainant’s trademark in respect of its various electronic goods is such that a prima facie presumption is raised that the Respondent registered the disputed domain names for the purpose of using it in some way to attract for commercial gain users to its websites by creating a likelihood of confusion with the Complainant’s trademark. See Nokia Corporation v. Private, WIPO Case No. D2000-1271 (finding bad faith registration and use pursuant to Policy, paragraph 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

In addition, the Panel recognizes that the disputed domain names resolve to websites that offer counterfeit or unauthentic products in competition with those offered under the PANASONIC mark. The Panel finds that such activities are disruptive to the Complainant’s business and therefore conclusive evidence that the Respondent registered and is using the disputed domain names in bad faith pursuant to Policy, paragraph 4(b)(iii). The Panel further notes that the websites do not appear to disclose the Respondent’s relationship with the Complainant.

For all of the above considerations, the Panel finds that the Respondent, by using the disputed domain names, is intentionally misleading the consumers and confusing them so as to attract them to the websites resolved by the disputed domain names, making them believe that the websites are associated with or recommended by the Complainant. The Respondent is therefore illegitimately capitalizing on the goodwill of the Complainant’s mark.

As such, the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith.

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 names <panasonicjapan.biz> and <panasonicjapan.com> be transferred to the Complainant.

Ho-Hyun Nahm, Esq.
Sole Panelist
Date: January 29, 2014