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Kabushiki Kaisha Isetan v. Ahn, In-Hyo [2004] GENDND 792 (7 June 2004)

1. The Parties

The Complainant is Kabushiki Kaisha Isetan, of Tokyo, Japan, represented by Matsubara, Muraki & Associates, Japan.

The Respondent is Ahn, In-Hyo, of Kyunngi-Do, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <isetan.net> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2004. On April 21, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 23, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2004. The Center advised the Respondent that following the Respondent’s failure to comply with the deadline for submission of its Response, the consequences of the default included the following:

(1) that a single-member Administrative Panel would be appointed (as requested by the Complainant);

(2) that the Panel would be informed of the Respondent’s default and the Panel would decide, in its sole discretion, whether to consider a Response if submitted later; and

(3) notwithstanding the default, the Center would continue to send all case-related communications to the Respondent.

On April 30, 2004, the Center received hardcopies of the Complainant’s Amendment to the Complaint with annexes thereto. The Complainant, through its authorized representative, Matsubara, Muraki & Associates, claimed that the Respondent had changed the contents of its website with the domain name in issue after receipt of the Complaint, which necessitated an amendment to paragraph 12 of the Complaint.

The Center advised the Complainant by email on May 3, 2004, that the Center would transmit the Amendment to the Complaint to the Panel when appointed, and that it would be in the Panel’s discretion whether or not to consider it, in accordance with paragraph 10 of the Rules. The Center sought confirmation from the Complainant’s authorized representative as to whether a hardcopy of the Amendment to the Complaint, including all annexes, was sent to the Respondent. The Complainant’s counsel confirmed by email on May 10, 2004, that a hard copy of the Amendment to the Complaint had been sent to the Respondent by airmail on April 27, 2004.

The Center appointed Francine Tan as the sole panelist in this matter on May 27, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Center further informed the parties that pursuant to Paragraph 15(b) of the Rules, absent exceptional circumstances, the Panel would forward a decision to the Center by June 10, 2004.

The language of the proceedings is English.

4. Factual Background

The Complaint is based on the Complainant’s alleged ownership of rights in the mark ISETAN, which the Complainant maintains is either identical or confusingly similar to the domain name in issue.

The Complainant owns numerous registrations of the trademark ISETAN (with or without a stylized “I”), in many countries including Japan, Korea, Singapore, Hong Kong, China, Malaysia, Taiwan, Indonesia, Thailand, Australia, New Zealand, the United Kingdom, and Spain (Complainant’s Annex 3).

It appears from the Complainant’s Annex 3 that the earliest registration in Korea dates from July 14, 1987 and in Japan, July 23, 1987, although it is noted that there are registrations elsewhere that date from as early as 1971 (e.g. in Singapore and the United Kingdom).

The Complainant asserts the following. The Complainant company is one of the most established and well-known department stores in Japan. Its annual turnover on consolidated basis in the fiscal years of 2002 and 2003 was 615,671,000,000 yen and 601,897,000,000 yen, respectively. Isetan is the fifth largest department store in Japan in terms of annual turnover, and is well known in Japan, Singapore, Korea, Malaysia, Thailand, Hong Kong, China and other countries. The word ISETAN has been used by the Complainant company as its trade name and trademark since its incorporation in 1930.

The founder of the Complainant company, Tanji Kosuge, was known as “Iseya Tanji.” He founded a draper’s shop called “Iseya Tanji Gofuku-Ten” in 1886. The word ISETAN is invented, derived from the founder’s name and the name of the draper’s shop.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(1) That the domain name in issue is identical or confusingly similar to the Complainant’s trademarks. The relevant part of the domain name is “isetan” which is virtually or essentially identical with the various ISETAN marks registered and used by the Complainant.

(2) That the Respondent has no rights or legitimate interests in respect of the domain name: as ISETAN is an invented word and inherently distinctive, and is well known as the Complainant’s trademark and trade name, the word ISETAN is not one that traders would legitimately choose unless seeking to create an impression of an association with the Complainant.

Further, the Complainant has never authorized or permitted the Respondent to use the word “isetan” in its domain name, and the Respondent has not used and is not using the domain name in connection with a bona fide offering of goods or services. The Respondent is not known by the domain name and is not making non-commercial use of it.

(3) The domain name was registered and is being used in bad faith by the Respondent. In the Complaint filed on April 21, 2004, it was argued that:

(a) The Respondent is using the domain name to mislead and deceive Internet users accessing the website of “www.isetan.net” into believing that they are accessing the Complainant’s website, but through the use of a technology called “frames,” Internet users would in fact be directed to another website, “www.a8.net,” which is owned by a Japanese company called F@N Communication, Inc. The said company purportedly runs an “affiliating program for banner advertisement between advertisers and media in its website of the domain name <www.a8.net>.” The Complainant alleges (albeit no evidence has been furnished) that it had in the past received an invitation from F@N Communication, Inc. to participate in that website.

(b) The fact that the Respondent knew or should have known of the registration and use of the Complainant’s ISETAN trademark prior to registering the domain name constitutes bad faith. Reference was made to a number of cases including SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, NAF Case No. FA94956; Marriott International, Inc. v. John Marriot, NAF Case No. FA94737; Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, NAF Case No. FA95037.

In regard to this point, it was argued that if the Respondent is affiliated with F@N Communication, Inc. or the owner of the domain <a8.net>, then it can be surmised that he knew of the registration and use of the Complainant’s trademark ISETAN before registering the domain name <isetan.net>. Even if the Respondent were not affiliated with F@N Communication, Inc. or with the owner of the domain name <a8.net>, then, since the Complainant company is also well known in Korea and the Respondent is framing the website of “www.a8.net,” in which only the Japanese language is used and is accordingly only targeted at Japanese customers, the Respondent should at least have known of the registration and use of the Complainant’s trademark prior to his registration of the domain name in issue.

An amendment was, however, made on April 30, 2004, to paragraph 12 of the Complaint, on the basis that the Respondent had changed the contents of the website at “www.isetan.net” after receipt of the Complaint. Additional Annexes 7 and 8 were attached to the amended Complaint and these consist of copies of the Respondent’s website “www.isetan.net” as at January 29, 2004, and of the website “www.a8.net” as at April 24, 2004, respectively. The points made in items (1) and (2) above in the original Complaint (i.e. addressing the first and second limbs to paragraph 4(a) of the Policy) were repeated in the amended Complaint. However, the portion relating to item (3) above (on the issue of bad faith registration and use) was modified to include a statement that at the time of filing the Complaint, the Respondent was using the website as described in item 3(a) herein above and shown on Annex 7. However, the website is currently shown as being “under construction.”

The Complainant contends in the amended Complaint that the Respondent’s conduct of ceasing the framing and changing the contents of the website at “www.isetan.net” to reflect it as being “under construction” after receipt of the Complaint is indicative of the Respondent’s bad faith in using and registering the domain name in issue without the Complainant’s authorization.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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.”

Paragraph 10(d) of the Rules further prescribes that the Panel is to determine the admissibility, relevance, materiality and weight of the evidence. On the specific issue of whether the amended Complaint should be considered, the Panel is inclined in the circumstances of this case and for the following reasons, to consider the amendment made to paragraph 12 of the Complaint. The issue at hand is akin to that of the admissibility of supplemental submissions, the latter of which has been considered in previous Panel decisions. In this regard, the Panel considers that it has to weigh two important considerations, on the one hand, the overall objective of the Policy which is to achieve an inexpensive and swift resolution to the dispute, and this is attained by keeping formalities and pleadings to a minimum. On the other hand, the Panel recognizes it has a “clear obligation … to make a true and accurate finding in the light of all relevant circumstances brought to its attention.” (See Skipton Building Society v. Peter Colman, WIPO Case No.D2000-1217). In regard to the latter consideration, the Panel finds that the principle adopted in the case of Las Vegas Sands, Inc. v. Red Group, WIPO Case No. D2001-1057 is applicable in this case: “To the extent the submissions raise relevant facts or case law that either did not exist at the time of the party’s initial filing, or could not reasonably have been foreseen, the Panel will consider that material in reaching its decision.”

The Panel is persuaded that the evidence submitted in the amended Complaint comprises relevant facts that did not exist at the time of the Complainant’s initial filing, and which the Panel should take into consideration in order to arrive at a true and accurate finding. Hence, the Panel has taken into account the amended Complaint and annexes attached thereto in arriving at its decision.

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) That the domain name has been registered and is being used in bad faith.

All three elements have to be satisfied by the Complainant before an order for the transfer of the domain name can be made.

A. Identical or Confusingly Similar

The Complainant has established rights in the word and trademark ISETAN and it is the view of the Panel that as the domain name incorporates the trademark, the Complainant has satisfied its burden under the first limb of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Policy at paragraph 4(c) gives assistance to respondents as to how they may demonstrate their rights and legitimate interests in a domain name. The circumstances listed are non-exhaustive, and proof of any one of these would suffice for the purposes of the Respondent demonstrating his rights or legitimate interests. Those circumstances are as follows:

“(i) before any notice to you of the dispute, your use or, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Whilst the general evidentiary burden for these proceedings falls on the complainant, with respect to the second limb of paragraph 4(a) of the Policy, it has been recognized in past Panel decisions that there is an inherent difficulty for a complainant to prove a negative. A respondent would in fact be in the best position to establish, with knowledge or facts in his possession, that he has rights or legitimate interests in the domain name. Hence, the Panel is of the view that the Complainant should only be expected to make a prima facie case that the Respondent has no rights or legitimate interests in the domain name, after which the burden would shift to the Respondent to dispute this allegation. (See Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769; Dow Jones & Company, Inc., and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704.)

In this case, the Panel finds that the Complainant has made out a prima facie case, based on the following circumstances:

(1) The Respondent has no obvious connection with the domain name in issue and there is no indication that he is known by the domain name.

(2) The Complainant has no relationship with the Respondent and has not authorized the Respondent to use ISETAN as a trademark or domain name.

(3) The Respondent is not trading under the ISETAN mark or using the mark on its site in connection with a bona fide offering of goods or services. Rather, visitors to “www.isetan.net” would be (although this is currently not the case) directed to another website of a Japanese company, which company had allegedly in the past approached the Complainant to “participate” in its website. Although no evidence has been furnished by the Complainant as regards the contact made by the Japanese company, the Panel is prepared to take note of this assertion in its overall consideration of this case.

The burden therefore shifts to the Respondent but he has not filed a response. In this regard, the Panel agrees that although “[a] respondent is under no legal obligation to participate in a domain name dispute, … its failure to do so leaves the respondent open to whatever inferences may derive from the material presented to the Administrative Panel and the Administrative Panel may take as true the credible assertion of fact of the complainant.” (See Autosales Incorporated, dba Summit Racing Equipment v. CostNet, WIPO Case No. D2004-0036.)

In this case, the Panel infers from the Respondent’s failure to dispute the allegations of the Complainant that they are indeed true and that the Respondent knows that his website is misleading. (See Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936).

In the absence of any contrary evidence, the Panel finds that the Complainant has satisfied its burden under the second limb of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of bad faith registration and use. This is not an exhaustive list, and includes:

(i) registration for the primary purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or to a competitor of the complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) registration for the purpose of preventing the owner of the trademark from reflecting the mark in a corresponding name, provided the respondent has engaged in a pattern of such conduct; or

(iii) registration primarily for the purpose of disrupting the business of a competitor; or

(iv) intentionally attempting, through the use of the domain name, to attract for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

As already noted, in not filing any response, the Respondent has not invoked any circumstance which could demonstrate his use and registration of the domain name in issue to be in good faith. In view of the fact that there is no evidence suggesting exceptional circumstances for the failure of the Respondent to file a response, the Panel draws the inference that the Respondent does not and/or is unable to, deny the allegations made in the Complaint and amended Complaint.

Moreover, the Panel infers from the available evidence that the Respondent registered and is using the domain name to create initial interest confusion among Internet users who visit the “www.isetan.net” site as to the source, sponsorship or affiliation of the website or of a product or service offered on the site for apparent commercial gain. The circumstance surrounding the change of status of the website to being “under construction” after the filing of the Complaint further adds to an overall sense of suspicion concerning the Respondent’s lack of bona fide registration and use of the domain name.

In view of the fact that ISETAN is inherently distinctive without any significance other than as a trademark of the Complainant, the registration of the domain name which is identical to the Complainant’s trademark in circumstances where there is no evidence that the Respondent is known under that mark or is using it in connection with any business bona fide, suggests that the Respondent was aware of the fame of the ISETAN mark and the Complainant’s rights in the mark. (See The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493).

Hence, it is the Panel’s finding that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the domain name registered by the Respondent is identical to the registered trademark of the Complainant; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the domain name in issue has been registered and is being used in bad faith.

Accordingly, the Panel orders that the domain name <isetan.net> be transferred to the Complainant.

Francine Tan
Sole Panelist

Dated: June 7, 2004