DECISION

Akai Electric Co., Ltd. v. Semi-Tech (Global) Ltd.

Claim Number: FA0206000114653

PARTIES

Complainant is Akai Electric Co., Ltd., Tokyo,  JAPAN (“Complainant”) represented by Felicity Porter.  Respondent is Semi-Tech (Global) Ltd., New York, NY, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <akai.com>, registered with Network Solutions.

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 submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 20, 2002; the Forum received a hard copy of the Complaint on June 17, 2002.

On July 8, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <akai.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 August 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 21, 2002, 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@akai.com 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 September 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as the 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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

The <akai.com> domain name is identical to Complainant’s AKAI mark.

Respondent has no rights or legitimate interests in the <akai.com> domain name.

Respondent registered and used the <akai.com> domain name in bad faith. 

B. Respondent failed to submit a Response in this proceeding. 

FINDINGS

Complainant owns federal trademark registration rights for the AKAI mark with the United States Patent and Trademark Office (“USPTO”), Registration Number 930,495.  The USPTO registration is based on a date of first use of November 18, 1970, but Complainant has “conducted business since its establishment in 1929 as an audio visual instrument manufacturer and distributor under the name AKAI and phrases that combine AKAI with other words.” 

Complainant’s AKAI mark is a coined term that has no meaning in the English language.  Hence, the AKAI mark is fanciful and represents the strongest variety of trademarks.  In addition, Complainant has invested significant capital over decades of widespread use and promotion of the AKAI mark in the United States and other countries. 

Respondent registered the <akai.com> domain name on July 26, 1995.  Respondent uses the subject domain name to resolve to a website containing information about Complainant and its products.  At the website, Respondent attempts to pass itself off as Complainant by providing information about Complainant that suggests that Complainant is the website owner. 

DISCUSSION

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 and shall draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar 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 and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established its rights in the AKAI mark through proof of registration with the USPTO and by longstanding continuous use of the mark for business purposes.

The domain name registered by Respondent contains Complainant’s AKAI mark in its entirety with the inconsequential addition of the generic top-level domain (“gTLD”) “.com.”  It is established precedent that the addition of a gTLD does not alter the domain name so as to add any source identifying significance.  Hence, the focus of a Policy ¶ 4(a)(i) “identical” analysis remains on the second level domain, in this case “akai.”  The second level domain is exactly the same as Complainant’s fanciful AKAI mark; thus, rendering Respondent’s <akai.com> domain name identical to Complainant’s mark.  See   Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

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

Rights to or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the <akai.com> domain name and Respondent has not challenged that assertion.  Complainant’s presentation of a prima facie case against Respondent shifts the burden to require Respondent to affirmatively demonstrate rights and legitimate interests in the <akai.com> domain name.  Since Respondent did not answer the Complaint, the Panel may presume Complainant has no such rights or legitimate interests in the domain name.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, due to Respondent’s failure to submit a Response, all reasonable inferences may be drawn in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also 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).

Complainant provides evidence that Respondent uses the <akai.com> domain name to pass itself off as Complainant.  At the website to which the subject domain name resolves, Respondent provides information indicating that Complainant is the owner and operator of the website.  Complainant, however, alleges that it has no connection with the website and that Respondent is opportunistically using Complainant’s fanciful AKAI mark at the website.  Respondent’s use of the domain name in this manner dilutes Complainant’s AKAI mark and confuses consumers. It does not constitute a connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it does not represent a legitimate fair use under Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with Complainant, demonstrate that Respondent lacks rights or legitimate interests in the domain name).

No evidence in this record suggests that Respondent has a connection with the AKAI mark that would support a finding that Respondent is commonly known by the <akai.com> domain name.  Respondent has no affiliation with Complainant and never received permission to use Complainant’s AKAI mark.  The Panel knows Respondent only as Semi-Tech (Global) Ltd. Respondent’s use of the domain name to represent itself as Complainant does not establish that Respondent is commonly known by the AKAI mark.  Therefore, Respondent has no rights or legitimate interests in the <akai.com> domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <akai.com> domain name and that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Circumstances that evidence bad faith registration and use of a domain name are set out in Policy ¶ 4(b).  These circumstances, however, are without limitation and the Panel is permitted to look at the totality of circumstances surrounding the case in order to determine bad faith.  See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality” of the circumstances).

This case is unique because Respondent uses the <akai.com> domain name for a website that is apparently designed as a means for Respondent to pass itself off as Complainant.  As such, this case does not fit squarely into a suggested bad faith circumstance under Policy ¶ 4(b).  Respondent, however, uses Complainant’s fanciful AKAI mark as a means of representing itself as Complainant for an unexplained purpose.  Given the circumstances, it is clear that Respondent is trading on Complainant’s goodwill.  Thus, Respondent knew of Complainant’s rights and interests in the fanciful AKAI mark prior to registering and using the domain name and Respondent’s registration and subsequent deceptive use of the <akai.com> domain name constitutes bad faith under Policy ¶ 4(a)(iii).  See  Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests ‘opportunistic bad faith’”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website).

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

DECISION

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

Accordingly, it is Ordered that the domain name <akai.com> be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: September 30, 2002.

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