START-UP TRADEMARK OPPOSITION POLICY

DECISION

Sanrio Company Ltd. v. Impresa.Inc.

Claim Number: FA0204000112477

PARTIES

Complainant is Sanrio Company Ltd., Toyko, JAPAN (“Complainant”) represented by Bonnie J. Barnish, of Owen Wickersham & Erickson.  Respondent is Impresa.Inc., Tokyo, JAPAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hellokitty.biz>, registered with Dotster.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.

On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

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 June 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Carolyn Marks Johnson as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant seeks transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

1. Respondent’s <hellokitty.biz> domain name is identical to Complainant’s registered HELLO KITTY mark.

2. Respondent has no rights or legitimate interests in the <hellokitty.biz> domain name.

3. Respondent registered the <hellokitty.biz> domain name in bad faith.

 

B. Respondent failed to submit a Response.

FINDINGS

Complainant owns numerous U.S. Federal Trademark Registrations with the U.S. Patent and Trademark Office (“USPTO”) for its HELLO KITTY mark, namely, Reg. No. 1,215,436 registered on November 9, 1982 and Reg. No. 1,279,486 registered May 29, 1984, among others. Complainant also owns 187 trademark registrations for its HELLO KITTY mark in Japan and holds numerous other registrations worldwide.

Complainant’s HELLO KITTY mark represents one of the most recognized characters in the world. Complainant’s mark was introduced in 1975, and due to the popularity of the HELLO KITTY mark,  Complainant’s mark has been compared to the American icon Mickey Mouse. Complainant has a HELLO KITTY theme park near Tokyo, where Respondent is domiciled, which attracts 1.4 million visitors a year.

Respondent registered the contested domain name on March 27, 2002 and has yet to develop a use for the domain name.

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

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

(1) the domain name is identical to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain ("gTLD") in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant established in this proceeding that it has rights in the HELLO KITTY mark through trademark registration with the USPTO and other countries’ trademark registrars, and Complainant’s continuous subsequent use.

The domain name registered by Respondent, <hellokitty.biz>, is identical to Complainant’s mark because the domain name incorporates Complainant’s mark in its entirety and the deletion of a space fails to make the domain name distinct from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

Accordingly, the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent has not come forward to proffer any evidence that it has rights in the HELLO KITTY mark anywhere in the world. Further, since Complainant created the significance in its HELLO KITTY mark, it is unlikely that Respondent could show rights in such a unique and distinct mark. Respondent has not come forward to suggest that it has any established rights or legitimate interests in the <hellokitty.biz> domain name and under STOP Policy ¶ 4(c)(i) Respondent has no such rights. See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name).

Due to the lack of a Response, it may be inferred that Respondent intends to use the domain name in order to divert Internet users interested in Complainant’s services or products to Respondent’s future website. Thus, Respondent’s registration of <hellokitty.biz> is not in connection with a bona fide offering of goods or services under STOP Policy ¶ 4(c)(ii). See Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”); see also William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002)  (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)).

Furthermore, no evidence on the record suggests and Respondent has not come forward to establish that it is commonly known by the <hellokitty.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

                 

Registration or Use in Bad Faith

Complainant’s HELLO KITTY mark represents an internationally recognized symbol. Complainant’s mark benefits from the protection provided by the 187 trademark registrations it holds in Japan, Respondent’s domicile. Due to the aforementioned circumstances and the nature of STOP proceedings, Respondent is thought to have been on notice of the existence of Complainant’s HELLO KITTY mark. Respondent’s subsequent decision to register an infringing domain name despite knowledge of Complainant’s prior rights in the HELLO KITTY mark represents bad faith registration and use under STOP Policy ¶ 4(a)(iii). See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim.  Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith”).

The domain name registered by Respondent, <hellokitty.biz>, is identical to Complainant’s established HELLO KITTY mark resulting in the likelihood that Internet users will believe that there is some affiliation between Respondent and Complainant; notwithstanding the fact that Respondent had no authorization to make use of Complainant’s mark. Registration and eventual use of the <hellokitty.biz> domain name are evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv). Respondent’s use of the disputed domain name will likely be to attract unsuspecting Internet users seeking Complainant’s website and products thereby benefiting from the goodwill associated with Complainant’s mark. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under UDRP ¶4(b)(iv) even though Respondent had not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).

The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the STOP Policy, the Panel concludes that relief shall be hereby GRANTED. Accordingly, it is Ordered that the domain name <hellokitty.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain SHALL NOT be permitted.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 9, 2002.

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