DECISION

Seiko Kabushiki Kaisha d/b/a Seiko Corporation v. CS into Tech

Claim Number:  FA0309000198795

PARTIES

Complainant is Seiko Kabushiki Kaisha d/b/a Seiko Corporation, Tokyo, Japan (“Complainant”) represented by Lawrence Rosenthal, of Stroock & Stroock & Lavan, LLP., 180 Maiden Lane, New York, NY 10038.  Respondent is CS into Tech, Baekseok-dong, Goyang Si Ilsan-gu, Gyeonggi-do, Daelim, KR 411360 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <seiko.net>, registered with Today and Tomorrow Co. Ltd.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 26, 2003; the Forum received a hard copy of the Complaint on September 30, 2003.

On October 9, 2003, Today and Tomorrow Co. Ltd. confirmed by e-mail to the Forum that the domain name <seiko.net> is registered with Today and Tomorrow Co. Ltd. and that Respondent is the current registrant of the name. Today and Tomorrow Co. Ltd. has verified that Respondent is bound by the Today and Tomorrow Co. Ltd. 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 October 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 12, 2003 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@seiko.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 November 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <seiko.net> domain name is identical to Complainant’s SEIKO mark.

2. Respondent does not have any rights or legitimate interests in the <seiko.net> domain name.

3. Respondent registered and used the <seiko.net> domain name in bad faith.

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

FINDINGS

Complainant holds numerous registrations for the SEIKO mark with the Japan Patent Office (e.g., Reg. Nos. 175840, 3009405, 3041068, 3041069).  Complainant also has numerous registrations relating to the SEIKO mark with the Korean Trademark Register (e.g., Reg. Nos. 30367, 41278, 71460, 71657) and the United States Patent and Trademark Office (e.g., Reg. Nos. 686264 and 1159088.).  These registrations were all issued prior to Respondent’s registration of  <seiko.net>.  Complainant has used the SEIKO mark as a trade name throughout the world for many years.  The SEIKO mark has been used in interstate commerce within the United States since 1949.  Complainant has made considerable efforts and expenditures in marketing its products and services in the United States since 1970.  Complainant has established goodwill in connection with the SEIKO mark.  On December 26, 2001, counsel for Complainant sent a letter to Respondent, demanding that Respondent desist from offering the the disputed domain name for sale and that Respondent agree to transfer the domain name to Complainant.  Complainant received no response from Respondent.

Respondent registered <seiko.net> on August 30, 2001.  Prior to December 26, 2001, Respondent’s domain name <seiko.net> consisted of an “under construction” page, which stated the domain name was for sale.  On January 21, 2002, Respondent removed the offer for the domain name’s sale.  Respondent transfered the disputed domain name to a new registrar between July 1, 2003 and September 23, 2003.  During this period, the <seiko.net> domain name directed Internet users to <seek2.com>, owned by a third party and containing no content relating to the name.  After the filing and service of the Complaint, the registration for <seiko.net> was assigned to a new entity.  The new entity contains the same e-mail contact information as was listed prior to the assignment.  Therefore, the Panel presumes that the current registration holder is the same entity.

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences 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 and/or Confusingly Similar

Complainant has established rights in the SEIKO mark through worldwide registrations and continuous use.    

The disputed domain name is identical to the SEIKO mark because Respondent has merely added a top-level domain name to the mark.  See Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) finding that <toshiba.net> is identical to Complainant’s TOSHIBA trademark; see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) finding <nike.net> identical to Complainant’s famous NIKE mark; see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) finding <mysticlake.net> identical to Complainant’s MYSTIC LAKE trademark and service mark. 

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain name.  Therefore, the Panel may draw adverse inferences from Respondent’s failure to respond to the Complaint.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint; see also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true; see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

There is no evidence that Respondent has ever been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  Additionally, the WHOIS registration information fails to imply that Respondent is commonly known by the name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) in determining that Policy ¶ 4(c)(ii) does not apply, “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name”; see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (Respondent does not have rights in a domain name when Respondent is not known by the mark).

Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also 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 State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); 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, its use of the names was not in connection with the offering of goods or services or any other fair use.

Furthermore, Respondent attempted to sell the disputed domain name for approximately five months after registration, which under the circumstances, is additional evidence that Respondent lacks rights and legitimate interests in the name pursuant to Policy ¶ 4(a)(ii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights; see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

Registration and Use in Bad Faith

Policy ¶ 4(b), pertaining to bad faith registration and use, contains indicators of bad faith, but is non-exclusive.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (the Policy “indicates that its listing of bad faith factors is without limitation”).

Respondent registered and used the disputed domain name, in bad faith, pursuant to Policy ¶ 4(a)(iii), because it reasonably should have known about Complainant’s famous and widely-used SEIKO marks, and its infringement thereof.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) ( “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration; see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith); see also Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith; 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 the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”; see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”.

Moreover, Respondent registered and used the disputed domain name, in bad faith, pursuant to Policy ¶ 4(b)(i) because it appears it initially registered and used the name for the sole purpose of its eventual sale.  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) finding bad faith where Respondent offered domain names for sale; see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) finding bad faith where Respondent offered the domain names for sale; see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”.

DECISION

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

Accordingly, it is Ordered that the <seiko.net> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  December 6, 2003

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