OKI Systems Deutschland GmbH v. Allen Ginsberg

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OKI Systems Deutschland GmbH v. Domains For Sale SP

Case No. D2002-0242

1. The Parties

The Complainant is OKI Systems Deutschland GmbH, a company incorporated

under the laws of Germany and domiciled at Hansa-Allee 187, 40549 Düsseldorf,

Germany.

The Respondent is, according to contact details from the Registrant’s Whois

database, Domains For Sale SP, Vastriku 9/1052, Tallinn, Estonia 19312,

Estonia.

2. The Domain Name and Registrar

The domain name at issue is <oki-osd.com>, registered with Dotster, Inc.,

Tacoma, Washington, United States of America.

3. Procedural History

A complaint was submitted to the World Intellectual Property Organization

Arbitration and Mediation Center ("the Center") on March 13, 2002.

Receipt of the complaint was acknowledged to the Complainant by the Center

on March 19, 2002. On March 19, 2002, the Center requested

a Registrar Verification issued by Dotster, Inc. On April 3, 2002, Dotster

Inc confirmed that it is the Registrar of the disputed domain name <oki-osd.com>.

On April 5, 2002, the Center issued a Complaint Deficiency Notification

as regards the identity of the registrant and as regards the Registrar's

lack of receipt of a copy of the complaint. On April 5, 2002,

the Center received an amended complaint by e-mail and on April 8, 2002,

Complainant again resent a copy of the complaint to the Registrar. Payment

of the administration fee was duly received. After Formal Compliance Review,

verifying that the complaint satisfies the formal requirements of the ICANN

Uniform Domain Name Dispute Resolution Policy ("the Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules")

and the World Intellectual Property Organization Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"),

a Notification of Complaint and Commencement of Administrative Proceeding

was issued on April 8, 2002. A Notification of Respondent Default

was issued on May 1, 2002.

The Complainant chose to have the dispute decided by a single-member Administrative

Panel. A Notification of Appointment of Administrative Panel and Projected

Decision Date was properly issued on May 8, 2002, indicating as

Single Panelist, Dr. Michael Treis. It was founded on a Statement

of Acceptance and Declaration of Impartiality and Independence dated May 7, 2002.

As the Panelist did not receive the Complaint until May 13, 2002,

the decision date was extended to May 29, 2002.

In accordance with Paragraph 3 (b) (xiii) of the Rules, the Complainant

has agreed to submit, only with respect to any challenge that may be made

by the Respondent to a decision by the Administrative Panel to transfer

or cancel the domain name that is the subject of its complaint, to the jurisdiction

of the courts where the Registrar is located.

The Registrar Verification states that the Policy applies to the domain

name at issue.

4. Factual Background

Based on the Complainant’s assertions, supported by the documents enclosed

as annexes to the complaint, and undisputed by the Respondent because of

its default, and further based on publicly available information from the

Internet, the Panel finds the following:

Complainant is a German subsidiary and distributor of electronic apparatus

and equipment (printers, telecom equipment, etc.) manufactured by OKI Electric

Industry Co., Ltd., Tokio, a very major industrial company. It was founded

in 1881 by Kibataro Oki and was the first Japanese manufacturer of telephone

systems. OKI Electric Industry Co. Ltd. and its various subsidiaries use

the trademark OKI, which has been registered in Germany. Customers of the

Complainant look for the products sold and services provided by the Complainant

under the brand OKI. The Complainant's registered business name is OKI Systems

Deutschland GmbH, without "(OSD)". However, the first three words of the

Complainant's trade name Oki Systems Deutschland can be abbreviated

"OSD".

The Respondent has registered the domain name <oki-osd.com>. The

web page corresponding to this domain name contains numerous links to other

web sites displaying pornographic material. There is also a statement on

the web site according to which the domain name <oki-osd.com> is for

sale.

Before the complaint was filed, the Complainant's mother company sent a

letter to Respondent or to Respondent's administrative contact an individual

named Allen Ginsberg complaining about the use of the domain name and

proposing an amide solution. Respondent did not answer.

5. Parties’ Contentions

A. Complainant (short summary; and request for remedy)

1) The Respondent’s domain name <oki-osd.com > is confusingly

similar with the Complainant’s trade name Oki Systems Deutschland. The

element OKI is the most distinctive element of the domain name and of

the Complainant’s trade name. The letters "OSD" in the domain

name correspond to the acronym for Oki Systems Deutschland. The Complainant’s

customers know the brand name Oki Systems Deutschland (OSD). The Complainant

has registered and uses the domain name<oki.osd.de> for its website.

The mother company of the Complainant, OKI Electric Industry Co., Ltd.,

Tokio, is the owner of the German trademark registrations Nos. 2037412

and 1129276 OKI in Classes 9 and 16, respectively. OKI Electric Industry

Co. Ltd. has authorized the Complainant to assert trademark rights for

the mother company in its own name.

2) The Respondent has no rights or legitimate interest in the domain

name <oki-osd.com>. The Respondent does not have any connection

whatsoever with the trademark OKI or with the trade name OKI OSD. Respondent

uses the domain as a link to a website with explicit pornographic content.

3) The Respondent has registered the domain name <oki-osd.com>

in bad faith and uses it in bad faith. The trademarks of the mother company

of the Complainant had been registered for 14 years when Respondent filed

for registration of the domain <oki-osd.com>. Respondent offers

the disputed domain name registration for sale for a price between US$

500 and US$ 3500, which is excessive. Respondent has registered the domain

name in order to prevent the Complainant from reflecting the name "oki-osd"

in its own domain name. The bad faith on the part of the Respondent is

also evidenced by the fact that the Respondent is using the disputed domain

name for services, which have nothing in common with the names „oki",

or "osd". The links displayed on the website with the address

of <oki-osd.com> are pointing the users to websites displaying pornographic

material, and such material does not have any logic connection with the

words or letters which form the disputed domain name. The choice of the

name cannot be coincidental. The attempt to sell the domain name in excess

of the Respondent’s investment relative to the domain name constitutes

bad faith use of the domain name.

4) The Complainant has requested, in accordance with Paragraph 4

i. of the Uniform Policy, that the Administrative Panel transfer the domain

name <oki-osd.com> to the Complainant.

B. Respondent

The Respondent has not submitted a response, and is thus in default,

and has not made any submissions whatsoever after the Notification of

Respondent Default.

6. Discussion and Findings

Paragraph 4 (a) of the Policy lists three tests which the Complainant must

satisfy in order to prevail. Complainant must satisfy that,

(i) the domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interest in respect

of such domain name; and

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

bad faith.

6.1 Identical of confusingly similar to a trademark or a service mark

The Complainant asserts that the disputed domain name <oki-osd.com>

is confusingly similar to a registered trademark in which the Complainant

can assert trademark rights and in which it has name and other rights.

The Panel notes that the Complainant has submitted evidence to the effect

that OKI Electric Industry Co., Ltd. as the owner of the German trademark

registrations for OKI has authorized the Complainant to assert trademark

rights in Germany. The Panel notes that the first element of the Complainant’s

registered business name, i.e. the word OKI, corresponds to the first

element of the domain name at issue. However, neither the trademark registrations

invoked by the Complainant nor the Complainant’s registered business name

comprise the letter combination OSD. As a matter of fact, judging from

the extract from the Commercial Registry enclosed as Annex 6 of the Complaint,

the Complainant’s registered business name is not "OKI Systems Deutschland

(OSD) GmbH", as indicated in the Complaint, because the OSD acronym would

not appear to be part of the registered business name.

On the other hand, the fact that the Complainant uses the domain name

<oki-osd.de> for its German website appears to confirm the Complainant’s

allegation that the acronym OSD is used as a short form for OKI Systems

Deutschland. Although this remains somewhat uncertain, as the Complainant

does not present any other evidence to this effect, this Panel does regard

the combination of the two acronyms OKI and OSD in one domain name as

highly unusual and distinctive. By using the domain name <oki-osd.de>

for the purpose of its distribution of OKI products, Complainant can therefore

establish exclusive rights in this trade name (German: "Geschäftliche

Bezeichnung"), in any case if it has acquired a secondary meaning (German:

"Geschäftsabzeichen"). Also, the Panel considers that in any case,

the trademark OKI which is also the salient element of the Complainant's

registered business name is very distinctive. Therefore, given that the

disputed domain corresponds to a trademark and to a trade name in which

the Complainant has acquired rights or in relation to which it can assert

rights, the Panel finds that the first criterion is fulfilled.

6.2 No rights or legitimate interests in the domain name

The Panel has considered the allegation by the Complainant as to the

lack of rights or legitimate interest of the Respondent in respect of

the domain name at issue. As a result of default, these allegations have

not been contested by the Respondent. Given that the trademark OKI and

in particular the trade name OKI-OSD is a very unusual and highly distinctive

combination of letters, one would expect that a party using the same letters

as key elements of its domain name either has something to do with the

Complainant or its products, or has some other proper and legitimate reason

for such use. However, the Panel fails to see any logical link whatsoever

between the domain name <oki-osd.com> and the Respondent and its

website and the explicit pornographic material displayed on other websites

to which the website with the disputed name is pointing. As the facts

of this case as presented to the Panel do not contain any indication or

even the slightest hint to the contrary, the Panel therefore finds that

the Respondent does not have any rights or legitimate interests in the

domain name.

6.3 The registration and use in bad faith

The Panel has considered Complainant’s allegations with regard to the

Respondent’s registration and use of the domain name in bad faith. These

allegations have not been contested by the Respondent because of his default.

On the basis of the facts presented to the Panel, the Complainant’s trade

name and the trademark OKI in relation to which he asserts exclusive trademark

rights do not appear to be famous or well known, in spite of the fact

that the mother company of the Complainant is a substantial and possibly

successful manufacturing company of printers and similar electronic equipment.

For this reason, the bad faith on the part of the Respondent does not

appear as evident. The mere existence of prior rights in relation to a

certain trade name or a trademark does definitely not yet allow the conclusion

that a third party who has chosen an identical or confusingly similar

name as its domain name must have been aware of such prior name and must

have acted in bad faith. Given the huge numbers of trademarks, trade names

and domain names used for all kinds of goods and services in all parts

of the world, conflicts between two confusingly similar names can not

as a general rule be resolved on the basis of an assumption that the posterior

user of a name has acted in bad faith and that the first one to use a

name shall prevail over subsequent users of the name. Rather, trademark

and trade name rights are territorial in nature and generally only extend

to a specific scope of similar goods or services, as long as their fame

does not call for a broader, possibly even all-encompassing scope of protection.

On the other hand, the Complainant’s trade name OKI-OSD is highly unusual,

as it would appear to consist of the Japanese family name Oki and the

acronym OSD, neither of which would seem to have any meaning in any of

the main European languages. At least in Europe, the chance or risk that

any third party would use the same combination must be extremely small.

It appears as more likely that the Respondent had learnt about the Complainant’s

trade name and its use of the domain name <oki-osd.de> for its website.

Moreover, the Panel notes that the Respondent has not reacted to the letter

from the Complainant’s mother company in which it complained about the

use of the disputed domain name for a website that provides links to websites

with pornographic material. Moreover, the Respondent has not reacted to

the Complaint either, but has preferred to simply ignore the current proceedings.

If the Respondent would have had any proper reason for its choice of the

domain name <oki-osd.com>, then it would have been very easy for

it to invoke such reason and challenge the Complainant’s assertion that

it would have acted in bad faith. The Respondent has not done so. The

Panel is free to draw its conclusions from this silence and passivity.

There are reasons to believe that the Respondent has chosen the domain

name <oki-osd.com> for its website in order to divert internet traffic

intended for Complainant's website to its own website displaying pornographic

material. There are also reasons to believe that it has registered the

domain name in order to make undue profit by selling it to the Complainant,

who obviously must be concerned about the negative impact of the Respondent's

activities and website on the goodwill attached to the Complainant's trade

name and trademark. The Panel therefore concludes that the Respondent

has registered and used the domain name at issue in bad faith.

7. Decision

The Panel has found that domain name <oki-osd.com>is confusingly

similar to the trade name of the Complainant and the trademark in relation

to which the Complainant is entitled to assert rights. The Panel has further

found that the Respondent has no rights or legitimate interest in respect

of said domain name. The Panel has further found that the domain name has

been registered and is being used in bad faith.

Therefore, pursuant to Paragraphs 4 (i) of the Policy and 15 of the Rules,

the Panel decides to request that the domain name <oki-osd.com> be

transferred to the Complainant OKI Systems Deutschland GmbH.

Michael Treis

Sole Panelist

Dated: May 28, 2002