Iwasaki Corporation (IWC); Iwasaki Hotels Corporation (IWH) v. Mitaden Co., Ltd

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Iwasaki Corporation and Iwasaki Hotels Corporation v. Mitaden Co., Ltd.

Case No. D2002-0357

1. The Parties

The Complainants are as follows:

- Iwasaki Corporation, 9-5, Yamashita-cho, Kagoshima-shi, Kagoshima 892-0816, Japan

- Iwasaki Hotels Corporation, 3755, Juni-cho, Ibusuki-shi, Kagoshima 891-0403,Japan.

The Respondent is as follows:

- Mitaden Co., Ltd., 24-15, Hinode-cho, Kagoshima-shi, Kagoshima 890-0086, Japan.

2. The Domain Names and Registrar

The disputed Domain names are as follows:

- <Ž­Ž™“‡Œð’Ê.com> (<bq- -3cph6ukqlt3e5jeqdi.com>)

- <‚¢‚킳‚«ƒzƒeƒ‹ƒY.com> (<bq- -gbci6vkn3pdoxoq.com>)

- <‚¢‚킳‚«ƒzƒeƒ‹ƒY.net> (<bq- -gbci6vkn3pdoxoq.net>).

The registrar is Network Solutions, Inc., 505 Huntmar Park Drive,

Horndon VA 20170-5142, United States of America ("the Registrar").

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 WIPO 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 15, 2002

and in hard copy on April 17, 2002. The

Center acknowledged receipt of Complaint on April 18, 2002. On the same day, the Center requested

the Complainants for the ACE code to convert the non-English domain names in

order for the concerned Registrar to verify these domain names. On April 19, 2002, the

Complainants notified the Center of the ACE code of the domain names. The Center sought registration details from the

Registrar, on April 19, 2002. The

Center received the confirmation

from the Registrar that, among

others, the Respondent is the current

registrant on April 25, 2002. After the communications between the Center and the Complainants

with regard to the transmission of a copy of Complaint with a cover sheet to

the Respondent and the Registrar, the Complainants sent them to the Respondent

and the Registrar by-email in accordance with the Rules, Paragraph 3(b)(xii)

and the Supplemental Rules, Paragraph 4(b).

On April 30, 2002, the Center satisfied itself that the Complainants had complied with all formal

requirements of the Rules, including payment of the prescribed fee, and notified the Respondent by

post/courier, facsimile and email

of the Complaint and of the commencement of this administrative proceeding. The

formal date of the commencement of the proceeding was accordingly April 30, 2002. The last day specified in the notice

for a response was May 20, 2002.

The communications by any means failed to reach the Respondent. On May 21, 2002,

no response having been filed, the

Center notified the Respondent of its default.

On June 3, 2002, the Center notified the parties of the appointment of Masato Dogauchi as the Administrative

Panel, after receiving the Statement of

Acceptance and Declaration of Impartiality and Independence from

Masato Dogauchi. The

Center notified that the Panel was required, absent exceptional

circumstances, to forward its decision to the Center by June 17, 2002.

The language of the proceeding is English.

The Panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules; payment was properly made;

the Panel agrees with the Center of assessment concerning the Complaints of compliance

with the formal requirements of the Rules; the Complaint was properly notified

to the Respondent 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

Since the Respondent failed to furnish its response, the Panel proceeds to

consider the following facts submitted by the Complainants:

Both of the Complainants are companies incorporated under Japanese

law with their principal place of business in Kagoshima, Japan. One of them, Iwasaki Corporation, is

doing its business in passenger traffic and transportation industry, and its

ranking in that industry was the first place in Kagoshima prefecture in 2001. The other one, Iwasaki Hotels

Corporation, is doing its business in hotel industry, and its ranking in that

industry was also the first place in Kagoshima prefecture in 2001. They are members of the same business

group, Iwasaki Group. This is the

reason why they jointly filed the Complaint against the Respondent.

On April 1, 2001, several

companies within Iwasaki Group merged into one. Kagoshima Kotsu Kabushikikaisha,

one of the merging companies, was selected as a surviving corporation at that

time and its name was changed to Iwasaki Corporation. Iwasaki Corporation is

still using the name of "Kagoshima Kotsu (Ž­Ž™“‡Œð’Ê)"

as its trademark or service mark in passenger traffic and transportation business.

"Kagoshima" is the name of the principal place of business of Iwasaki

Corporation and "Kotsu" means "traffic" in Japanese. The name

of "Kagoshima Kotsu (Ž­Ž™“‡Œð’Ê)"can be found in southern part of Kyushu

Island where Kagoshima prefecture is situated.

On the other hand, Iwasaki Hotels Corporation uses "‚¢‚킳‚«ƒzƒeƒ‹ƒY (Iwasaki Hotels)", as its corporate name which is registered in Japan. This name is used in hotel business in

Kyushu Island and is known by people in even other countries through Iwasaki

Hotels Corporation ofs campaign in golf tournament and so on.

According to the information registered at the

WHOIS database of the Registrar, the disputed domain names <Ž­Ž™“‡Œð’Ê.com>, <‚¢‚킳‚«ƒzƒeƒ‹ƒY.com> and <‚¢‚킳‚«ƒzƒeƒ‹ƒY.net> were registered by the

Respondent. There is no evidence

that shows the activity of the Respondent using these domain names.

5. Parties of Contentions

A. Complainants

The Complainants assert in essence as follows:

(1) The disputed domain names are identical or confusingly similar to the trademark and

the company name, respectively, in which the Complainants have rights under Japanese law;

(2) The Respondent should be considered as having no rights or legitimate interests in

respect of the dispute domain names;

(3) The disputed domain names were registered in bad faith.

With regard to the item (1) above, the Complainants introduce copies of

their corporate registration which show their present corporate names. The corporate registration of Kagoshima

Kotsu Kabushikikaisha also show its previous corporate name before the merger

on April 1, 2001, that is "Kagoshima Kotsu (Ž­Ž™“‡Œð’Ê) Kabushikikaisha". The Complainants introduce copies of their corporate profile

and information made by third parties as well as their own brochures using

their corporate names and the trademark of "Kagoshima Kotsu (Ž­Ž™“‡Œð’Ê)".

With regard to the items (2) and (3) above, the Complainants assert the

following facts showing the Respondent ofs bad faith in its registration without

any legitimate interests:

- The Respondent ofs business areas are not related to "Kotsu (Œð’Ê)" nor to "Hotels (ƒzƒeƒ‹ƒY)", since the Respondent is a corporation whose

business are electric work, works of fire facility, sale of hot water equipment

and sale of air-conditioning equipment;

- The Respondent has never used or made any demonstrable preparation to use the

disputed domain names;

- The Respondent has acquired, at least, <“ì“ú–{‹â�s.com>

and <“ì�‘Œð’Ê.com> too. "“ì“ú–{‹â�s (Minami-Nippon Bank)" is a

bank with its principal place of business in Kagoshima, and "“ì�‘Œð’Ê (Nangoku Kotsu)" is a passenger transportation business company with its

principal place of business in Kagoshima, too. There is no indication of the Respondent ofs legitimate

interests in respect of these domain names.

The Complainants accordingly request a decision that the disputed domain

names be transferred to the Complainants.

B. Respondent

There was no response filed.

6. Discussion and Findings

According to Paragraph

15(a) of the Rules, a Panel shall decide a Complaint on the basis of the statements and documents submitted and in

accordance with the Policy, the Rules and any rules and principles of law that

it deems applicable. Since the Respondent has not made any

submission, the following decision is rendered on a basis of the submission

from the Complainants.

In accordance with Paragraph 4(a) of the Policy, for the Complaint to be granted, the Complainants must prove each of the

following:

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

service mark in which the Complainants

have 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.

These requirements will be verified respectively.

Identical and Confusing Similarity

"Kagoshima Kotsu (Ž­Ž™“‡Œð’Ê)" was the essential part of the previous

corporate name of Kagoshima Kotsu Kabushikikaisha, one of the Complainants,

before the merger on April 1, 2001, and such name is still used, at

least, as the service mark in passenger traffic and transportation business of

Iwasaki Corporation, one of the Complainants. Incidentally, although the Complainants assert that the name

of "Kagoshima Kotsu (Ž­Ž™“‡Œð’Ê)"

is used as the trademark in such business, there is no evidence showing that

the name is registered as the trademark in Japan. However, it is established by such evidences as brochures

and other documents submitted by the Complainants that the name is used, at

least, as the service mark by Iwasaki Corporation and such mark is well known

to the consumers in, at least, Kagoshima area. Based upon such facts, Iwasaki Corporation has right in such

service mark protected under Japanese law (Article 2(1)(i) of "Husei Kyoso

Boshi Ho" (Unfair Competition Law), 1993 Law No.47).

On the other hand, "Iwasaki Hotels (‚¢‚킳‚«ƒzƒeƒ‹ƒY)" is the essential part of the corporate name

of Iwasaki Hotels Corporation, the other one of the Complainants. It is clear from the record that the

disputed domain names include identical terms, "Ž­Ž™“‡Œð’Ê" and "‚¢‚킳‚«ƒzƒeƒ‹ƒY",

with the essential part of the Complainants of trade name and with company name

used legitimately in Japan. Absent

the rebuttal from the Respondent, there is no reason to deny the finding that

the first requirement is satisfied.

Legitimate Interests

According to the complaint, the Complainants

could not find where and how the Respondent is using or is preparing to use the

disputed domain names. As the

Respondent has not argued any rights or legitimate interests in respect of the

disputed domain names, it is inevitable to conclude that the second requirement

is also satisfied.

Bad Faith

In accordance with the Paragraph 4(b)(ii),

where it is found that the Respondent have engaged in a pattern of such conduct as having registered the domain

names in order to prevent the

owners of the trademark or service

mark from reflecting the mark in a corresponding domain names, such circumstances can be evidence of the registration and use of the disputed domains name

in bad faith. In this case, the Complainants pointed out the fact that the

Respondent has acquired such other unrelated domain names representing famous

names of others as <“ì“ú–{‹â�s.com> and <“ì�‘Œð’Ê.com>.

In consideration of the fact that the Respondent has not argued to the

contrary, the third requirement is also satisfied.

Accordingly, all three cumulative requirements

as provided for in Paragraph 4(a)

of the Policy are determined to be

satisfied.

7. Decision

In accordance with Paragraphs 4(b)(i) of the Policy and 15 of the Rules, the Panel decides that the disputed domain

name <Ž­Ž™“‡Œð’Ê.com>

(bq- -3cph6ukqlt3e5jeqdi.com) shall be transferred from the Respondent (Mitaden

Co., Ltd.) to one of the Complainants (Iwasaki Corporation); and that the

disputed domain names <‚¢‚킳‚«ƒzƒeƒ‹ƒY.com>

(bq- -gbci6vkn3pdoxoq.com) and <‚¢‚킳‚«ƒzƒeƒ‹ƒY.net>

(bq- -gbci6vkn3pdoxoq.net) shall be transferred from the Respondent (Mitaden

Co., Ltd.) to the other one of the Complainants (Iwasaki Hotels Corporation).

Masato Dogauchi

Sole Panelist

Dated: June 17, 2002