Generic Top Level Domain Name (gTLD) Decisions

Complainant is Marubeni Corporation, Tokyo, JAPAN ("Complainant") represented by Lawrence Rosenthal, of Stroock & Stroock & Lavan. Respondent is Marubeni Corporation, Vancouver, BC, USA ("Respondent").

The domain name at issue is <marubeni.net> registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 21, 2001; the Forum received a hard copy of the Complaint on February 22, 2001.

On February 26, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <marubeni.net> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@marubeni.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 27, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

Complainant requests that the domain name be transferred from Respondent to Complainant.

B. Respondent

Respondent has not disputed the contentions addressed in the Complaint.

Complainant is a Japanese corporation with its principal place of business in Tokyo, Japan.

Complainant owns the common law rights to the MARUBENI mark for a wide variety of goods and services, namely, for brokering trade between enterprises and countries in the fields of industry, agriculture, consumer goods, commodities and natural resources; financing services; buying, selling, holding and leasing of real estate; commodity brokerage; commodity investment advice; commodity exchange; financial services and consultation; construction services, namely, planning, laying out and custom construction of commercial properties; leasing of construction equipment and machinery; distributorship in the fields of textiles, building materials, rubber products, leathers, metals, automobiles, trucks, generators and engines, and paper and pulp products; leasing of computers; beverages; coffee; eggs; grain; hay products; juice; fish; meat; oils; oilseed; peas and beans; protein meal; sugar; and vegetables.

Complainant is the owner of U.S. Trademark Registration No. 2,390,152 for the mark MARUBENI for cotton fabric. Complainant owns the domain names: <marubeni.com>, <marubeni.org>, <marubeni.co.jp/home/english/index.html>, and <marubeni-usa.com>. Complainant widely uses the trade name MARUBENI in the United States, Japan and essentially throughout the world and has done so for many years before Respondent registered the <marubeni.net> domain name at issue.

In North America alone, "Marubeni" appears in the name of 25 currently existing corporate entities authorized by Complainant to use the name. Complainant's has two subsidiary corporations in the Vancouver area, namely, Marubeni Canada Ltd. and Marubeni Pulp & Paper Canada Ltd.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent 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.

Under the Policy, Complainants must demonstrate that they have rights in the mark, and that the domain name at issue is identical or confusingly similar to that mark.

Accordingly, Complainants’ rights are evidenced by its registered mark, MARUBENI. Respondent’s domain name, <marubeni.net>, is identical to the mark. See Technology Properties, Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the Complainant’s mark, RADIO SHACK).

Further, Respondent’s domain name is so confusingly similar to Complainants’ mark a reasonable Internet user would assume the domain name is somehow affiliated with Complainants’ business. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar "so as to likely confuse Internet users who may believe that are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement").

The Panel finds that Respondent’s domain name is confusingly similar to the Complainants’ well-established mark.

The Complainant contends that the Respondent is not generally known by the mark, has made no commercial or noncommercial use of the domain names, and therefore, has no rights in the domain name. Policy ¶ 4(c)(i) - (iii). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding no legitimate rights or interests when Respondent has not used the domain names in connection with any type of bona fide offering of goods and services).

Additionally, Respondent’s passive holding of the domain name is evidence of Respondent’s lack of rights and legitimate interests in the domain name. See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

The Panel finds that Respondent has no rights or legitimate interests in the domain name in question.

Respondent was soliciting bids to sell the domain name for at least $300. Offering a domain name, which infringes upon another’s trademark, for sale in excess of out of pocket costs is evidence of bad faith. See The Step2 Co. v. Softastic.com Corp., D2000-0393 (WIPO June 26, 2000) (finding that the Respondent’s attempt to sell the domain name in question on Greatdomains.com, a domain name auction site, constitutes bad faith).

Complainants have established their long-standing use of their famous mark. The reasonable inference may be drawn, therefore, that Respondent knew or had to have known about Complainants’ famous mark prior to registering the domain name in question. This is evidence of bad faith. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue");

Additionally, Respondent has made no use of the other domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain name is use of the domain name in bad faith).

The Panel finds that Respondent registered and used the disputed domain name in bad faith.

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name, <marubeni.net>, be transferred from Respondent to Complainants.