START-UP TRADEMARK OPPOSITION POLICY

DECISION

Kyocera Mita Corporation v. Lexel

Claim Number: FA0204000112432

PARTIES

Complainant is Kyocera Mita Corporation, Osaka, JAPAN (“Complainant”), of Schulte Roth & Zabel LLP.  Respondent is Lexel, Rueil-Malmaison, FRANCE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <mita.biz>, registered with BookMyName.com.

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 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 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 13, 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:

The <mita.biz> domain name is identical to Complainant's MITA mark.  Respondent has no rights or legitimate interests in the <mita.biz> domain name.  Respondent registered the <mita.biz> domain name in bad faith.

B. Respondent did not submit a Response.

FINDINGS

Complainant registered its MITA mark in France as Registration Number 1,584,797 in 1988.  Complainant uses the mark in relation to industrial chemicals for photographs and photosensitive materials including paper, films, plates, and drums.  Complainant also owns three other registrations in France, as well as European Community Registration Number 39,537.  Complainant registered its mark with the United States Patent and Trademark Office as Registration Number 1,327,592 in 1985.  Complainant also owns eight other U.S. trademark registrations in the United States.

Complainant’s company is known internationally as a producer of network-ready, multifunctional, document imaging systems.  Sales of Complainant’s products in 2001 were approximately 1.4 billion dollars.  Complainant also holds the registration for <mita.com>.

Respondent registered the disputed domain name on March 27, 2002.  Complainant’s investigation has revealed that Respondent is not doing business under the name MITA or “Lexel.”

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 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 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 has established its rights to the MITA mark through Registration in France and the United States.  Respondent’s <mita.biz> domain name is identical to Complainant’s MITA mark.

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

Rights to or Legitimate Interests

Respondent has not come forward with a Response and therefore the Panel is permitted to presume that Respondent has not demonstrated 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 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”).

Respondent has not come forward with evidence and no evidence in record suggests that Respondent owns any trademarks or service marks for MITA or <mita.biz>.  Without this information Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(i).  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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

Based on the distinct and famous nature of Complainant’s mark in France and the United States, any use of the disputed domain name by Respondent will likely confuse Internet users as to the source, sponsorship, and affiliation of  <mita.biz>.  It can be inferred that Respondent registered the disputed domain name in order to use this confusion to attract Internet users to its website.  This type of use is not considered to be a bona fide offering of goods or services pursuant to 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 Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding that Respondent’s intended use of the <peachtree.biz> domain name to provide information and services related to Complainant’s PEACHTREE product, but without Complainant’s authorization, would cause customer confusion and was not a bona fide offering of goods or services).

No evidence in this record suggests and Respondent has not come forward to establish such evidence that it is commonly known as MITA or <mita.biz>.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Registration or Use in Bad Faith

Respondent’s knowledge of Complainant’s rights in the MITA mark and Respondent’s lack of rights to the domain name, permit the inference that Respondent registered the domain name to prevent Complainant from reflecting its mark in another domain name.  This type of behavior is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(ii).  See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark).

Furthermore, because of the famous and distinctive nature of Complainant's MITA marks, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <mita.biz> domain name.  Registration despite knowledge of Complainant’s rights is evidence of bad faith registration.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

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

DECISION

Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <mita.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 27, 2002.

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