Morinaga & Co. Ltd. v. Jin Tong

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Morinaga

& Co., Ltd. v. Jin Tong

Case No.

D2001-0622

1. The Parties

The complainant is Morinaga

& Co., Ltd., a Japanese corporation with its principal place of business

located in Tokyo, Japan (the "Complainant").

The respondent is Jin Tong,

an individual having an address at 163 Center Road, Woodbridge, Connecticut

06525 United States of America (the "Respondent")

2. The Domain Name and

Registrar

The domain name at issue

is <morinaga.com> (the "Domain Name"). The Registrar is Network

Solutions, Inc. of 505 Huntmar Park Drive, Herndon, VA 20170-5139, United States

of America (the "Registrar").

3. Procedural History

The electronic copy of

the original Complaint was submitted to the World Intellectual Property Organization

Arbitration and Mediation Center (the "Center") on May 1, 2001.

The hardcopy of the Complaint was received on May 3, 2001. Therein, the Complainant

requested for a single-member Panel. The Center sent an Acknowledgement of Receipt

to the Complainant on May 4, 2001.

On May 4, 2001, the WIPO

Center sent a Request for Registrar Verification to the Registrar to which the

Registrar responded on May 8, 2001, confirming the identity of the Respondent.

On May 10, 2001, the Center

forwarded the Notification of Complaint and Commencement of Administrative Proceeding,

together with a copy of the Complaint to the Respondent, by post/courier, facsimile

and email.

On May 29, 2001, the administrative

contact for the Domain Name submitted an email to the Center purporting to be

a Response to the Complaint. The Center sent an Acknowledgement of Receipt of

Respondent’s Response on June 11, 2001.

On June 18, 2001, the Center

forwarded a Notification of Appointment of Administrative Panel by email to

the parties appointing Soh Kar Liang as the Sole Panelist. The Case File was

transmitted to this Panel by email on June 18, 2001, followed by a hardcopy

which was received on June 20, 2001. This Panel finds the Administrative Panel

properly constituted and appointed in accordance with the Rules and Supplemental

Rules.

4. Factual Background

The Complainant’s business

was founded in Japan in 1899 by Tichiro Morinaga and became the first western-styled

confectionery manufacturer in Japan. The Complainant’s current President and

CEO is Gota Morinaga. The family name "Morinaga" has been used by

the Complainant as its company name and trademark for over 100 years.

The Complainant’s MORINAGA

goods are sold in many countries. The Complainant has offices in Japan, Amsterdam,

Shanghai, Taipei and Singapore and has business dealings with well-known food

companies like Sunkist and Nabisco. The Complainant operates a website at the

URL http://www.morinaga.co.jp which contains both English and Japanese content

about the Complainant and its products. The Complainant had registered the domain

name MORINAGA.CO.JP on March 11, 1996.

The Complainant has registered

MORINAGA as a trademark in over 40 countries including Japan, USA, Benelux,

Canada, China, France, Germany, Hong Kong, Korea, Singapore and Taiwan. A list

of 145 trademark applications and registrations for the word MORINAGA in various

forms was attached to the Complaint. The Complaint also exhibits a copy of the

Complainant’s US trademark registration certificate for the word MORINAGA (No

1,483,718) for coffee and tea, among other things. The goods and services covered

by the other listed applications and registrations were not indicated.

The Respondent registered

the Domain Name on November 1, 1997, and no webpage or website currently exists

at the URL http://www.morinaga.com. The Respondent has also registered the domain

names <1800superbowl.com> and <1800visa.com>. There is also a third

domain name <yomiuri.net> registered by Tong Jin & Co, USA Inc. Pursuant

to the powers under Rule 10(a), this Panel has verified that the administrative,

technical and billing contact for this domain name has the same address and

telephone number as the Respondent.

5. Parties’ Contentions

A. The Complainant

The Complaint contends

that:

1. The Domain Name is

identical or confusingly similar to the Complainant’s trademark;

2. The Respondent has

no rights or legitimate interests in respect of the Domain Name for the following

reasons:

2.1 The Respondent has

never used or commented on MORINAGA as a trademark, trade name or other trade

symbol, or descriptive or informative manner to describe the Respondent’s goods

or services, or any others. The Respondent did not make any preparations to

use the Domain Name in connection with a bona fide offering of goods or services.

The Complainant also relied on a statement in PepsiCo, Inc v. Datasphere

Ltd NAF Claim No FA0102000096695, that is "a long-continued failure

to create a website for a registered domain name is strong evidence of no legitimate

interest and bad faith use";

2.2 The Respondent is

not known by the designation MORINAGA and does not own any trademark registration

for MORINAGA; and

2.3 The Respondent’s

registration of the Domain Name has interfered with the Complainant’s use of

MORINAGA as a ".com" domain name.

3. The Domain Name was

registered and is being used in bad faith for the following reasons:

3.1 The Domain Name

was registered without the Complainant’s consent, license or authorization;

3.2 The Respondent registered

the Domain Name with constructive notice of the Complainant’s US trademark registration.

The Respondent must have known of the Complainant’s trademark rights in MORINAGA

in view of the Complainant’s long use and many trademark registrations of the

same. In support, the Respondent relied on the following statement in Columbine

JDS Systems, Inc v. Jin Lu e-Resolution Case No AF-0137:

"A US business

person must be presumed to have knowledge of the existence of the Trademark

Register of his own country, and, as a prudent businessman, should make a search

of such register before embarking on a business endeavor involving a domain

name. We find that the failure to make even a rudimentary effort to undertake

such a search to be negligent."

3.3 The Respondent has

engaged in a pattern of registering third-party trademarks as part of domain

names. The Complainant relied on the Respondent’s registration of <1800superbowl.com>

and <1800visa.com> and <yomiuri.net> in support;

3.4 The Respondent has

held the Domain Name for almost 3½ years without any commercial or non-commercial

use of the same. In support, the Complainant explained its investigation on

the Respondent, in particular:

(a) There is no telephone

listing for the Respondent in Connecticut;

(b) No response

was received to an inquiry sent on or about February 23, 2001, to

the Respondent’s administrative contact at <ice31@ix.net.com.com>;

(c) A telephone call

to the administrative contact’s telephone number (203) 3976801 was answered

by a person who declined to identify himself, stated that there was no one named

Tong Jin (the Respondent) or Dong Jang (the administrative contact), and denied

that the telephone number was (203) 3976801;

3.5 The Complainant

submitted on the basis of Clerical Medical Investment Group Limited v. Clericalmedical.com

(Clerical & Medical Services Agency) WIPO Case No D2000-1228 that mere

holding of an infringing domain name without active use is bad faith;

3.6 The Complainant

relied on the statement in PepsiCo, Inc v. Datasphere Ltd. NAF Claim

No FA0102000096695 quoted earlier in this decision;

3.7 The Respondent’s

conduct violated Section 43(d) of the US Trademark Act, 15 USC 1125, as amended

by the US Anticybersquatting Consumer Protection Act;

3.8 The Respondent intends

to prevent the Complainant from registering the Domain Name; and

3.9 The Respondent intends

to disrupt the Complainant’s business or to pressure the Complainant to buy

the Domain Name from the Respondent for a price.

The Complainant accordingly

requested for the transfer of the Domain Name to the Complainant.

B. The Respondent

The administrative contact

responded to the Complaint by an email. The Respondent did not make any submission.

Since the Complaint was sent to the administrative contact’s email address and

the administrative contact did respond to the Complaint, instead of holding

that no Response was filed by the Respondent, this Panel will accept the administrative

contact’s email as a Response under Rule 5 in lieu of a Response from the Respondent.

For ease of reference, this Panel will refer to all statements in the Response

as if they were statements by the Respondent.

This Panel finds it expedient

to quote the Response herein (including all typographical errors):

"This letter is intended

to respond to the complaint as follows:

I, the undersigned, have

been maintaining captioned domain name "Morinaga.com" for almost four (4) years

during which time I have never infringed the trademark of Morinaga * Co., Ltd.,

commonly and widely known as Morinaga Milk.

Frankly speaking, when

I registered the domain name "Morinaga.com" with the Network Solution Inc.,

I did not intend to use particularly the trademark of Morinaga * Co., Ltd. My

registered domain name is intended to bear an abstract meaning not implication

of the trademark of Morinaga &Co., Ltd. In other words, my domain name will

implicate only Japanese in common sense but-not Particulary trademark of Morinage

& Co., Ltd.

The reason why I have been

maintaining this domain name is aimed at any possibilities of developing this

name in business in the future.

For your reference, I have

not received any mail or message regarding this domain name from any person

yet. Al I know is that someone have made a phone call looking for me while I

was away from my home.

As I have previously stated,

I did not intend to infringe the trademark of Morinaga & Co., Ltd., when

I made the registration and the domain name is not absolutely being used in

bad faith.

Please advise if you need

any further statement from me.

I would highly appreciate

you attention to the foregoing statement.

Sincerely yours,

Dong Jang"

6. Discussion and Findings

In order to succeed in

this proceeding, Article 4(a) of the Policy requires the Complainant to prove

the existence of each of the following elements:

1. The Domain Name is

identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

2. The Respondent has

no rights or legitimate interests in respect of the Domain Name; and

3. The Domain Name has

been registered and is being used in bad faith.

Identical or confusingly

similar trademark

By virtue of the many trademark

registrations of the Complainant for MORINAGA, this Panel holds that the Complainant

has rights in the trademark MORINAGA.

It is an established practice

to ignore the ".com" portion of domain names when comparing them against

corresponding trademarks since it is a non-distinguishing feature. On this basis,

this Panel finds that the Domain Name (disregarding the ".com" portion)

is identical to the Complainant’s trademark MORINAGA.

Legitimate interest

It cannot be denied that

the Respondent’s registration of the Domain Name has interfered with the Complainant’s

use of MORINAGA as a ".com" domain name in the sense that the Complainant

is unable to register the Domain Name in its own name. However, this is at best

a neutral fact and cannot on its own form the basis of a finding of no legitimate

interest.

More importantly, the Complainant’s

contentions regarding non-use of the Domain Name has not been denied or rebutted

by the Respondent. In addition, the Respondent’s unqualified statement that

"[t]he reasons why I have been maintaining this domain name is aimed

at any possibilities of developing this name in business in the future"

(emphasis added) confirms that the Respondent has yet to use the Domain Name.

This Panel accordingly accepts that the Respondent has not used the Domain Name

since its registration on November 1, 1997.

The Complainant relies

on Pepsico, Inc v. Datasphere for the proposition that a long-continued

failure to create a website creates a strong inference of no legitimate interest.

It has to be borne in mind that a domain name may be used for other Internet

services (eg, email, file transfer) quite apart from web services. It is not

necessary to create a website to use a domain name, although that would be a

common thing to do. Therefore, it is not the failure to create a website but

the failure to use a domain name which results in an inference of no legitimate

interest. However, there is no need to deliberate over whether absence of a

website alone could justify a finding of no legitimate interest.

It is clear on the facts

of this case that the Respondent has yet to use the Domain Name for any Internet

service. A bare assertion by the Respondent that the Domain Name was intended

to bear some abstract meaning and aimed at unidentifiable and speculatory future

business in the face of almost 4 explained years of non-use is not sufficient

to show any right or legitimate interest. Therefore, this Panel is prepared

to find that the Respondent has no rights or legitimate interests in the Domain

Name on the basis of a long-continued failure to use the Domain Name.

Bad faith registration

and use

It is the view of this

Panel that the Complainant has shown on a balance of probability that the Domain

Name was registered and being used in bad faith.

The Domain Name has not

been used despite having been registered for almost 4 years. The absence of

use of a domain name after a long lapse of time not only provides an inference

of no legitimate interest (see above) but also an inference that there has been

use (or more accurately, non-use) of the domain name in bad faith. Where non-use

of a domain name started from the time of registration, unless there is contrary

evidence, it is a fair inference that registration was also in bad faith. A

similar dual inference of no legitimate interest and bad faith can also be seen

in Pepsico, Inc v. Datasphere.

The Complainant’s other

grounds raised in support of bad faith registration and use of the Domain Name

by the Respondent are not individually sufficient to indicate bad faith registration

and use. The grounds described in paragraphs 5.3.1 to 5.3.6 above together with

the long period of non-use of the Domain Name since registration provide a cumulatively

strong inference of bad faith registration and use. As for the grounds described

in paragraphs 5.3.7 to 5.3.9 above, they are unsupported by evidence and lack

sufficient particulars to help in determination of the issue. However, in view

of the above, this is not a crucial defect.

In the circumstances, this

Panel finds that the Respondent has registered the Domain Name in bad faith

and the Domain Name is being used in bad faith.

7. Decision

Based on the findings and

reasons stated above, it is decided that the Domain Name shall be transferred

to the Complainant.

Soh Kar

Liang

Sole Panelist

Dated: June

28, 2001