Terumo Corporation v. Toby

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Terumo Corporation v. Toby

Case No. D2001-0524

1. The Parties

The Complainant is Terumo Corporation of 44-1, Hatagaya 2-chome, Shibuya-ku, Tokyo, 151-0072, Japan, represented by Ms. Yoshie Eda of Messrs Blakemore & Mitsuki of Tokyo.

The Respondent is "Toby" of "Flat 6, London, SW7 4RW, United Kingdom" [sic].

2. The Domain Name and Registrar

The disputed domain name is < terumo.com > and the Registrar is Network Solutions, Inc., of Herndon, Virginia, USA.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on April 10, 2001, and in hard copy on April 17, 2001. The Complaint named as the Respondent Jason Vaughan of Netergy.com Ltd., Studio 1B, 101 Farm Lane, London SW6 1QJ, United Kingdom. The Center acknowledged receipt on April 11, 2001, and that day sought registration details from the Registrar. On April 12, 2001, the Registrar confirmed that it is the Registrar of the disputed domain name, that the registrant is "Toby", of "Flat 6, London, SW7 4RW, United Kingdom" [sic]; that Jason Vaughan is the Administrative, Technical and Billing contact with respect to the disputed domain name; that the Registrar’s 5 Service Agreement (which incorporates the Policy) is in effect and that the status of the registration is "active".

The Center drew the Complainant’s attention to the discrepancy between the registrant and the Respondent as named in the Complaint and on April 20, 2001, by email and on April 24, 2001, in hardcopy the Complainant amended the Complaint so as to name Toby as the Respondent.

On April 23, 2001, the Center satisfied itself that the Complainant had complied

with all formal requirements of the Rules, including payment of the prescribed

fee and that day formally notified the Respondent by post/courier, facsimile

and email (including notification to Jason Vaughan) of the amended Complaint

and of the commencement of this administrative proceeding and sent copies to

the Complainant, the Registrar and ICANN. The Center also printed out a copy

of the web page appearing at http://www.terumo.com .

The formal date of the commencement of the proceeding was accordingly April 23, 2001. The last day specified in the notice for a response was May 12, 2001.

On May 10, 2001, Jason Vaughan stated in an email to the Center:

"…we have no wish to become involved and will happily hand over the name without further ado. However, this name does belong to our client and he may wish to at least have his costs covered before handing the name over. I would suggest a nominal sum of say $500 would speed the process along".

On May 14, 2001, no Response having been filed, the Center notified the Respondent of its default. In response, in a further email that day to the Center, Jason Vaughan stated:

"…we do not contest this at all."

On May 16, 2001, the Center notified the parties of the appointment of Alan L Limbury as the administrative panel, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated May 29, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.

The language of the proceeding was English.

The panel is satisfied that the Complaint, as amended, was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the amended Complaint’s compliance with the formal requirements of the Rules; the amended Complaint was properly notified in accordance with paragraph 2(a) of the Rules; no Response was filed within the time specified by the Rules and the single-member administrative panel was properly constituted.

4. Factual Background

The complainant, established in 1921, is a public company conducting the business of manufacturing and marketing throughout most of the world medical products and equipment, including pharmaceuticals, nutritional food supplements, blood bags, disposable medical devices, artificial organs, medical electronic and digital thermometers.

The Complainant started using the trademark ‘TERUMO’ in 1963 and has continuously used the mark to designate its numerous products. The Complainant adopted its present corporate name in 1974 and has spent substantial amounts in advertising its products under its corporate name and trademark ‘TERUMO’ for more than thirty-seven years.

The net sales of the Complainant's products for the fiscal year 1999 were about U.S.$2.3 billion, the third highest among companies in the medical apparatus and instruments manufacturing industry in Japan. In addition, the Complainant’s products are sold in more than 150 countries and it has 26 overseas branches in the world including nine branches in Europe and one in the UK.

The Complainant has spent more than U.S.$10.6 million for the fiscal year 1999 alone on various types of advertising, including television, newspapers, journals and its website <terumo.co.jp>, using the mark ‘TERUMO’. Out of this advertising expenditure, U.S.$0.5 million were spent in Europe.

AIPPI-Japan has selected Complainant's mark ‘TERUMO’ in its list of the most famous Japanese trademarks with the object of assisting the public and patent and trademark offices in other countries to be alert to avoid infringement of such marks. The Japan Patent Office, in its examination procedure, uses this list as prima facie evidence that a trademark is famous and well known.

The Complainant is the owner of various trademark registrations in over 100 countries, including Japan, the United Kingdom, the United States, and the European Community, for the prominent and famous mark ‘TERUMO’ covering numerous goods and services. [Full details are before the panel].

The disputed domain name was registered with Network Solutions, Inc.on November 9, 1999.

5. Parties’ Contentions

A. Complainant

Identity/ confusing similarity

The domain name <terumo.com> is identical and/or confusingly similar

in appearance and pronunciation to the Complainant's mark ‘TERUMO’ in which

the Complainant has rights, except for the fact that the domain name adds the

generic top-level-domain ".com" and it employs lower case letters while the

trademark is generally used with capital letters. Such addition of the generic

top-level-domain ".com" and the use of lower case letters has no legal significance

in determining similarity, because it does not serve to distinguish that name

from the Complainant's mark ‘TERUMO’. See Pharmacia & Upjohn Company

v. Moreonline (WIPO Case No. D2000-0134

dated April 19, 2000).

The Respondent has no rights or legitimate interest in respect of the domain

name <terumo.com>

(a) The Respondent and/or the company Netergy.com Ltd. and/or Toby, as an individual

or as a company, is not identified by the name TERUMO.

(b) The Complainant has not licensed the Respondent and/or his company, Netergy.com

Ltd., to use its trademark, and the Respondent and/or his company Netergy.com

Ltd. is not an agent or a distributor of the Complainant's products and does

not have any connection, affiliation or any other relationship with the Complainant

that would entitle it to use the mark ‘TERUMO’.

(c) The Respondent only placed the following poor content display without any

substance, on the website at <terumo.com> more than one year after his

registration of <terumo.com> on November 9, 1999:

The

domain name has been registered by

Netergy.com on behalf of one of our clients.

If you have any

enquiries regarding this domain name, please click the enquiry link

below and they will be passed onto the owner.

Domain Name Enquiry

© Netergy.com

Ltd 2000-2001

This is not a use in connection with a bona fide offering of goods or services

under Policy para. 4(c)(i), nor a legitimate noncommercial or fair use of the

domain name under Policy para. 4(c)(iii), because the web site at <terumo.com>

lacks any substance and the notice only implies an intention to sell the domain

name, <terumo.com>. In addition, leaving such notice at <terumo.com>

might misleadingly divert the Complainant’s consumers and tarnish the Complainant’s

trademark ‘TERUMO’ since the consumers might misunderstand that there is some

relationship between Netergy.com Ltd. and the Complainant.

(d) The Respondent has not been commonly known by the domain name (Policy para.

4(c)(ii)).

(e) The Complainant's mark ‘TERUMO’ is a coined and fancy mark originally created

by the Complainant. The principal function of such coined mark is to identify

the owner of the mark as the source of a product, and the Complainant's mark

‘TERUMO’ is well known and/or famous and has a substantial commercial value

deriving from this function; therefore, it is against the public interest to

permit the use of ‘TERUMO’ by unrelated third parties. In this respect, this

case is comparable to Pharmacia & Upjohn Company v. Moreonline.(WIPO

Case No. D2000-0134 dated April 19, 2000).

Accordingly, the Respondent cannot claim rights and/or legitimate interest

in <terumo.com> and the Complainant believes the Respondent would not

suffer any loss or damage from the transfer of the domain name <terumo.com>

to the Complainant.

The domain name <terumo.com> has been registered and used by the Respondent

in bad faith

(a) The Respondent has registered the domain name primarily for the purpose

of selling it to the Complainant for valuable consideration in excess of out-of-pocket

costs directly related to the domain name. (Policy para. 4(b)(i)).

(i) The domain name <terumo.com> was not used at all in September, 2000,

and the Complainant approached the Respondent requesting the transfer of the

domain name for reasonable out-of-pocket costs without disclosing the Complainant’s

identity. Then, the Respondent replied: "I would not even entertain any

offer of less than $50,000." Such demand is clearly in excess of the Respondent’s

out-of-pocket costs directly related to the domain name, since the Respondent

appears to have incurred no expenses other than registration costs as no use

of domain name <terumo.com> was made then. [A complete record of the correspondence

with the Respondent is before the panel].

(ii) After the Complainant stopped the direct negotiation with the Respondent,

the Respondent prepared website and placed there the notice described above.

Such use of the website is inconsistent with the Respondent’s claim during the

negotiation that: "it was bought with a view to creating a Spanish language

property site...". The whole sequence of events and the Respondent’s behavior

mentioned above strongly indicates that the Respondent knew the commercial activities

and prominence of the Complainant, and his primary purpose of registering <terumo.com>

was the sale of the domain name to the Complainant for profit. See Surfdog,

Inc. v. Dr. Charles Cooper (WIPO

Case No. D2000-0065 dated April 3, 2000), for bad faith on the part of a

Respondent who has demanded the payment of sums many times in excess of his

cost in registering the domain name when requested by a Complainant to transfer

the domain name.

(iii) The Respondent has registered at least 48 domain names, which include

other registered or filed Japanese trademarks, such as ‘aiful’(Reg. No.2692680),

‘kinden’(Reg. No.2707799), and ‘minebea’(Appl. No.H10-092178). [Details are

before the panel]. The owners of these trademarks and the Complainant are all

well known and/or famous Japanese companies whose shares are traded at the Tokyo

Stock Exchange. In addition, the Complainant is a famous company and its business

extends in Europe and in the UK, with substantial expenditure on advertising

its products and the company.

This shows that the Respondent targeted famous Japanese companies knowing of

their commercial activities and their rights in their trademarks when he registered

these domain names, including <terumo.com>. Although the Respondent uses

a few different names as registrant, the administrative and technical contacts

are identical for all these 48 domain names, and this shows that Jason Vaughan

is the real and actual registrant of all these 48 domain names. See ISL Marketing

AG, and The Federation Internationale de Football Association v. J.Y.Chung,

Worldcup2002.com, Wco., and Worldcup2002 (WIPO

Case No.D2000-0034 dated April 3, 2000).

The effect of such warehousing of many domain names is to give the Respondent

a possible chance of selling them for profit, and registration and use of a

domain name in bad faith. See Nabisco Brands Company v. The Patron Group,

Inc. (WIPO Case No. D2000-0032 dated

February 23, 2000).

(iv) Out of 48 domain names the Respondent has registered, he listed ‘upforgrabs’

as registrant for 35 domain names. This is further evidence which indicates

the Respondent’s intention to sell the domain names he has registered. For the

use of a registrant’s name in bad faith, see Microsoft Corporation v. Amit

Mehrotra (WIPO Case No. D2000-0053

dated April 10, 2000).

Accordingly, the evidence overwhelmingly indicates that the Respondent has

registered the domain name <terumo.com> primarily for the purpose of selling

it to the Complainant for valuable consideration in excess of out-of-pocket

costs directly related to the domain name.

(b) The Respondent’s warehousing of 48 domain names, which include many identical

or confusingly similar to the prominent trademarks and trade names of Japanese

public companies, strongly indicates the Respondent’s pattern of conduct aimed

at preventing the Complainant from reflecting its own trademark ‘TERUMO’ in

a corresponding domain name, <terumo.com>.

B. Respondent

There was no response filed.

6. Discussion and Findings

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely:

- the disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain

name; and

- the disputed domain name has been registered and is being used in bad faith.

Failure to file a response

Numerous cases under the Policy have adopted and applied the principle that

a Respondent’s failure to dispute the allegations of the Complainant permits

the inferences that the Complainant’s allegations are true. See, for example,

Hewlett-Packard Company v. Full System (FA 0094637); David G. Cook

v. This Domain is For Sale (FA0094957) and Gorstew Jamaica and Unique

Vacations, Inc. v. Travel Concierge (FA0094925).

A somewhat broader statement of principle is contained in Reuters Limited

v. Global Net 2000, Inc. (D2000-0441):

"The Panel draws two inferences where the Respondent has failed to submit

a response: (a) "the Respondent does not deny the facts which the Complainant

asserts" and (b) "the Respondent does not deny the conclusions which

the Complainant asserts can be drawn from those facts"."

The panel must nevertheless be satisfied the facts asserted by the Complainant

establish grounds for relief under the Policy.

Rights

The Complainant has produced copies of its numerous registrations of the trademark

TERUMO and has established that it has rights in that mark.

Identity or confusing similarity

"Essential" or "virtual" identity is sufficient for the

purposes of the Policy: see e.g. The Stanley Works and Stanley Logistics,

Inc v. Camp Creek. Co., Inc, (D2000-0113)

and Nokia Corporation v. Nokiagirls.com (D2000-0102).

The addition of ".com" and the use of lower case are inconsequential.

The panel finds the disputed domain name to be identical to the Complainant’s

trademark. The Complainant has established this element.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which,

if proved, establish a registrant’s rights or legitimate interests to a disputed

domain name. The Complainant has the onus of proving the absence of rights or

legitimate interest on the part of the respondent but, if the Complainant makes

out a prima facie case, it is up to the Respondent to demonstrate the contrary

(Newman/Haas Racing v. Virtual Agents, Inc. WIPO

Case D2000-1688, March 29, 2001).

The Complainant has not authorized the Respondent to use its mark nor to include

it in any domain names. The prima facie case is made out. The Respondent does

not contest this administrative proceeding. Accordingly, the Complainant has

established that the Respondent has no rights or legitimate interest in the

disputed domain name.

Bad faith

The correspondence between the parties, conducted on the part of the Complainant

without revealing the Complainant’s identity, gives rise to a strong suspicion

that the Respondent was aware of the Complainant’s mark and that he placed an

asking price of $50,000 on the disputed domain name with the Complainant’s mark

in mind. In the absence of a Response, the panel draws the conclusion that the

domain name was registered for the purpose of sale to the Complainant for a

price exceeding the Respondent’s out-of-pocket costs directly related to the

domain name.

The registration by the Respondent of domain names embodying the registered

trade marks of other Japanese companies, coupled with the absence of a Response,

leads the panel to conclude that the Respondent registered the disputed domain

name in order to prevent the Complainant from reflecting its trademark in a

corresponding domain name and that the Respondent engaged in a pattern of such

conduct.

In the absence of any countervailing evidence, the panel finds that the Complainant

has proved that the disputed domain name was registered and is being used in

bad faith.

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires

the domain name <terumo.com> to be transferred to the Complainant.

Alan L. Limbury

Sole Panelist

Dated: May 28, 2001