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Morinaga & Co., Ltd. v. Jin Tong [2001] GENDND 1244 (28 June 2001)

WIPO Arbitration and Mediation Center

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")

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").

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.

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.

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.

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):

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.

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.

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.

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.

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