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Mayekawa Mfg. Co., Ltd. v. Modern Limited - Cayman Web Development [2005] GENDND 1607 (26 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mayekawa Mfg. Co., Ltd. v. Modern Limited - Cayman Web Development

Case No. D2005-0745

1. The Parties

The Complainant is Mayekawa Mfg. Co., Ltd., Koto-ku, Tokyo, Japan.

The Respondent is Modern Limited - Cayman Web Development, George Town, Grand Cayman GT, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <mayekawa.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2005. On July 18, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On July 18, 2005, BulkRegister.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 29, 2005. The Center verified that the Complaint together with the amendment to 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 August 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2005.

The Center appointed James A. Barker as the sole panelist in this matter on September 6, 2005. 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.

On September 20, 2005, the Panel issued an order for the Complainant to provide evidence to support its claim that it had registered the trademark MAYEKAWA in India, and extending the due date for the decision to September 26, 2005. The Complainant provided further evidence in response to the Panel Order on September 23, 2005.

4. Factual Background

The Complainant has manufactured and provided services in relation to refrigeration compressors under the brand name of “Mycom” since 1924. The Complainant has factories located in Japan, Mexico, USA, Belgium, Brazil and Korea, and exports refrigeration compressors to more than 100 countries.

No information is known about the Respondent, other than its registration details and the information about the website to which the disputed domain name reverts.

At the date of the decision, the disputed domain name reverts to a website containing a variety of links to other sites, including links titled “Compressor”, “Mycom”, “Mycom Refrigeration Compressors”, “Refrigeration Machine”, “Temperature”, and “Pd-65b Fan”.

5. Parties’ Contentions

A. The Complainant

The following contentions are summarised or, where indicated in quotation marks, quoted from the Complaint (references in this decision to “the Complaint” include both the Complaint and the Amended Complaint).

Identical or Confusingly Similar

The Complainant does business in Japan and other countries under the company name “Mayekawa”. The Complainant sells refrigeration products under its trademark MYCOM.

Mayekawa is the name of the founder and owner family of the Complainant. It has also been the name of the Complainant since 1924, in Japan and other countries. The Complainant claimed to have registered MAYEKAWA as a trademark in India.

The Complainant continued to maintain that it had registered rights in the trademark MAYEKAWA, even after correspondence from the Center (sent in the context of granting the Complainant a short extension to correct a deficiency in the original Complaint) requesting that the Complainant document its trademark rights. On July 25, 2005, in its initial email response to that correspondence, the Complainant stated that “we are collecting the information, from our overseas offices, such as registration and/or an article of incorporation of our subsidiary using mayekawa name to prove unregistered TM rights.” Despite these statements, the Complainant’s amended Complaint made only a small number of additional assertions, including that it had registered MAYEKAWA as a trademark in India. No explicit statement was made or evidence provided that it had unregistered trademark rights.

Rights or Legitimate Interests

According to the Complainant’s investigations (of which no details are provided in the Complaint), the Complainant does not see any reason for the Respondent to use the disputed domain in relation to its products or services.

Registered and Used in Bad Faith

As stated in the Complaint:

“In the said domain of mayekawa.com, there are links to compressor and Mycom, which has no practical contents made by the Respondent. Meanwhile, the Complainant is a manufacturer and service provider of refrigeration compressor with the brand name of Mycom since 1924. The factories are located in Japan, Mexico, USA, Belgium, Brazil and Korea and we are exporting compressors to more than 100 countries in the World. The Complainant does not see any other reason than the respondent trying to sell the domain name to the complainant, because there is no reason to use mayekawa and Mycom names at the respondent organization. Also, the Respondent’s link to Refrigeration Machine leads to one of the parts suppliers for Mycom compressor, though the Respondent has no rights to talk about name of Mycom. Whether the parts supplier carry Mycom genuine parts is unknown. This is very confusing and not fair to other customers of the Complainant. It is obvious that to introduce one particular parts supplier in the manufacturer’s web site is not our intention. We could be sued in the future.

Therefore, we must conclude that the said domain name was registered and is being used in bad faith.”

B. Respondent

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

6. Discussion and Findings

General

Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must prove that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements.

Nature of the Complaint

Before turning to discuss those elements, a threshold question arises as to whether the Complainant has complied with the Rules, for the purpose of paragraph 4(a) of the Policy. This is because there is a poverty of argument in the Complaint, and little evidence that is relevant to demonstrating the elements that the Complainant must prove under paragraph 4(a) of the Policy. The Center notified the Complaint, having being satisfied that the Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, including the requirements under paragraph 4(a).

Paragraph 4(a) of the Policy requires a respondent to submit to an administrative proceeding where a complainant “asserts to the applicable provider, in compliance with the Rules of Procedure” each of the elements set out in paragraph 4(a). Paragraph 3(b)(ix) of the Rules requires that a complaint shall “describe, in accordance with the Policy, the grounds on which the Complaint is made, in particular,

(1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and

(3) why the domain name(s) should be considered as having been registered and being used in bad faith.”

Paragraph 3(b)(ix) obviously requires more than mere assertions by the Complainant. Paragraph 3(b)(ix) requires the Complainant to “describe” the grounds of its Complaint, including “the manner in which” the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights, and “why” the Respondent should be considered as having no rights or legitimate interests and as having acted in bad faith.

The onus under paragraph 4(a) of the Policy and paragraph 3(b)(ix) of the Rules is clearly on the Complainant. However in this case, the Complaint makes no explicit statement or argument as to the manner in which the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. Neither does the Complainant identify which of its marks are relevant in this respect. Neither is there any real argument as to why the Respondent should be considered as having no rights or legitimate interests in the disputed domain name.

The Panel also notes previous panel decisions denying complaints on the basis, at least in part, that the complainant failed to expressly make allegations that the respondent contravened elements of paragraph 4(a) of the Policy (see DR. S.A. v. aunomdelarose.com, WIPO Case No. D2001-0666).

In accordance with paragraph 10 of the Rules, the Panel’s view is that it should not take a narrow or pedantic approach to the Complaint’s compliance with paragraph 3(b)(ix) of the Rules. Such an approach is supported by the language of the Policy, in accordance with which the descriptions under paragraph 3(b)(ix) must be set out. As such, paragraph 4(c) of the Policy refers to rights or legitimate interests being demonstrated “if found by the Panel to be proved based on its evaluation of all the evidence presented” (emphasis added). Paragraph 4(b) provides that bad faith may be demonstrated in certain circumstances “if found by the Panel to be present” (emphasis added). Paragraph 4(b) does not require that evidence to be present in any particular source or that it must be entirely presented by the Complainant. It is clearly open to the Panel to proceed to consider the Complaint and make findings on the basis of all the evidence and, if the Panel finds it necessary, its own investigations.

Consistent with this approach, the Panel agrees with the Center’s conclusion that the Complaint complied with paragraph 3(b)(ix) of the Rules, taking the whole of the Complaint and evidence into account, and otherwise complied with the formal requirements of the Policy, the Rules and the Supplemental Rules.

A. Identical or Confusingly Similar

The Complainant refers to two trademarks in which it claims to have rights: MYCOM and MAYEKAWA.

The Complainant clearly has registered rights in MYCOM. Substantial evidence of its rights in that mark was attached to the Complaint. The Complainant makes no explicit statement or argument that the disputed domain name is identical or confusingly similar to its trademark MYCOM. Regardless, it is obvious that the disputed domain name is not identical or confusingly similar to that trademark, either visually or phonetically.

For the Complaint to succeed, it must therefore demonstrate that the Complainant has rights in the trademark MAYEKAWA. The Complainant did not make such a claim, or provide evidence explicitly in support of it having common law rights in that trademark. Rather, the Complainant asserted that MAYEKAWA is its registered mark in India (but not apparently in any other jurisdiction, for some reason not explained in the Complaint) and that registration of a mark is sufficient to establish that the Complainant has rights in the mark.

In support of its claim of having registered rights in India, the Complaint attached only a copy of a letter to the Complainant from its Indian solicitors. The letter, dated March 24, 2004, states that the solicitors had attended a hearing of the Indian Trade Marks Registrar, and that the Registrar “has accepted the application for advertisement in the Trade Marks Journal.”

However, an advertisement in the Indian Trade Marks Journal is not, by itself, evidence of registered rights in the mark. The advertisement is a step in the process towards trademark registration. But that step is not the end of the process. The application is still subject to possible opposition proceedings (see information relating to the application process at the website for the Indian Controller General of Patents, Trademarks and Designs at “http://patentoffice.nic.in/”). It has been consistently held by panels in other UDRP proceedings that a trademark application is not sufficient evidence of rights in a mark, without other evidence of unregistered (i.e., common law) rights (see for example, Mk-Net-Work v. IVE Technologies, WIPO Case No. D2004-0302; PRGRS, Inc. v. Pamela Pak, WIPO Case No. D2002-0077).

On September 20, 2005, the Panel issued an order requesting the Complainant to provide evidence of its claimed registered rights in the trademark MAYEKAWA by September 24, 2005. On September 23, 2005, the Complainant responded to the Panel Order, providing a copy of a letter from its Indian solicitors which attached a copy of advertisements in the Indian Trade Marks Journal for three marks applied for by the Complainant: MAYEKAWA INDIA, MAYAKAWA (sic, as advertised), and MYCOM. The Panel notes that the advertisement itself clearly indicates that it is “Advertised before Acceptance under section 20(1) Proviso” (emphasis added).

This evidence takes the Complainant no further than its evidence provided in its original Complaint. Evidence of a trademark application is not evidence of a trademark registration for the purpose of the Policy. Accordingly, the Complainant has not demonstrated registered rights in the trademark MAYEKAWA.

In the absence of registered rights, it would have been open to the Complainant to seek to demonstrate that it has common law rights in the mark MAYEKAWA. In the case of a common law mark, a complainant must show that the mark is used as a trademark or service mark and that the mark has acquired distinctiveness in relation to the complainant’s goods or services. However, the Complainant made no such claim. Even ignoring the lack of any argument as to common law rights, and taking all the evidence into account, there is no conclusive evidence provided in the Complaint that the Complainant has common law rights in the mark MAYEKAWA. The Complaint attached only evidence of its use of the trademark MYCOM and a great deal of company information (such as brochures and product information).

The Complainant also attached evidence of MAYEKAWA being its company name. But that does not demonstrate that MAYEKAWA had acquired distinctiveness and was used as the Complainant’s trademark. The evidence in the Complaint was that the Complainant instead overwhelmingly markets its products and services under the trademark MYCOM which, as indicated above, is self-evidently neither identical nor deceptively similar to the disputed domain name.

For these reasons, the Complainant has not demonstrated that it has rights in MAYEKAWA as a registered or common law trademark.

B. Rights and Legitimate Interests and Registered and Used in Bad Faith

It is unnecessary for the Panel to go further to consider the Complainant’s case in relation to paragraphs 4(a)(ii) and (iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

James A. Barker
Sole Panelist

Dated: September 26, 2005