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Komatsu America Corp. v. Kamatsu [2005] GENDND 1626 (13 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Komatsu America Corp. v. Kamatsu

Case No. D2005-0749

1. The Parties

The Complainant is Komatsu America Corp., Vernon Hills, Illinois, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is Kamatsu, Grand Cayman , United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <kamatsu.com> is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2005. On July 14, 2005, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On July 18, 2005, Address Creation 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 20, 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 July 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2005.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 30, 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.

4. Factual Background

The Complainant is a wholly owned subsidiary of Komatsu Limited (“KL”), an equipment manufacturer and distribution company established since 1920. KL has obtained federally registered trademarks and service marks in connection with goods and services in respect of the KOMATSU mark in the United States of America. The Complainant, being a wholly owned subsidiary of KL, has an exclusive license to use the KOMATSU marks in the United States of America and in various other countries in connection with construction, mining, utility and related equipment.

The Complainant has made extensive use of the KOMATSU mark in connection with its services. Over the years, the KOMATSU marks have become uniquely associated with the Complainant and its products and services. The Complainant has established a website at “www.komatsuamerica.com” that links to KL’s “www.komatsu.com” site which enables users to access information regarding KOMATSU’s products and services.

The Respondent had registered the <kamatsu.com> domain name on March 12, 2003, and was using it to promote and advertise websites offering for sale equipments and other products by competitors of the Complainant and KL. Registration records from various domain name registrars reflect that the Respondent has registered many domain names that are variations or misspelling of well-known marks. The Respondent has also been named in several UDRP administrative proceedings requesting the transfer of domain names that were comprised of misspellings or variations of well-known marks.

The Complainant has attempted to resolve this dispute via informal channels and has tried to contact the Respondent by telephone and email. The Respondent could not be contacted and has failed to respond to the Complainant’s letters and emails, including a cease and desist letter on April 26, 2005. Since further attempts at informal resolution would prove to be futile, the Complainant commenced proceedings under the UDRP.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <kamatsu.com> is confusingly similar to the KOMATSU mark. The Complainant asserts that KAMATSU is visually similar and orally identical to the KOMATSU mark. Internet users intending to visit the Complainant’s or KL’s websites may inadvertently type <kamatsu.com> into the address bar of their web browser and consequently would be directed to the Respondent’s website. Thus, the Complainant argues that the Respondent’s domain name is a clear misspelling of the KOMATSU mark and is a classic example of “typo-squatting”, a practice which has been held in previous UDRP administrative proceedings to be evidence of confusing similarity (See Six Continents Hotel, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161). The Complainant further argues that the confusing similarity between the Respondent’s domain name and the Complainant’s trademark is compounded by the fact that KL has registered and uses the <komatsu.com> domain name to direct Internet users to its official website.

Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the <kamatsu.com> domain name. This is because the Respondent has no connections or affiliation with the Complainant or its parent company KL and has not received any license or consent, express or implied, to use the KOMATSU marks in a domain name or in any other manner. The Complainant further contends that the Respondent has never been known by the <kamatsu.com> name and the Respondent’s only use of the <kamatsu.com> domain name is in connection with the website that merely acts as a host page for links and advertisements with regard to other websites hosted by the Complainant’s competitors. Such a use is neither a bona fide offering of goods or services nor a demonstration of legitimate interest. (See Harcourt, Inc., NAF Claim No. 214531; American Express Co. v Am. Express Pay, NAF Claim No. FA196044; Geoffrey, Inc. v. Toyrus.com, NAF Claim No. FA150406; Google, Inc. v. John G., NAF Claim No. FA106084). The Complainant points out that previous UDRP administrative panels, confronted with similar factual situations concerning the Respondent, have concluded that the Respondent’s conduct was not indicative of bona fide use or a legitimate interest. Finally, the Complainant contends that the Respondent’s registration of the <kamatsu.com> domain name was no accident because well-known KOMATSU mark is not a mark that a trader would legitimately choose unless he is seeking to create an impression of association with the rightful owner of the well known mark. (See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Thirdly, the Complainant contends that the Respondent has registered and used the <kamatsu.com> domain name in bad faith. The Complainant asserts that the Respondent has registered the disputed domain name in bad faith as he did so with knowledge of KL’s and/or the Complainant’s rights in the KOMATSU marks. The Complainant argues that they have engaged in extensive advertising, including trade publication advertising featuring the KOMATSU name and mark. Thus, it is not conceivable that the Respondent was unaware of KL’s and/or the Complainant’s rights in the KOMATSU mark, and the Complainant asserts that the Respondent is deemed to have constructive notice of KL’s trademark rights by virtue of KL’s federal registrations of the KOMATSU mark. (See Marconi Data Sys., Inc. v. IRG Coins & Ink Source, Inc., WIPO Case No. D2000-0090; America Online, Inc., NAF Claim No. FA117319; and Microsoft Corp. v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501). The Complainant also argues that the Respondent’s well-documented practice of registering domain names comprising variations or misspelling of well-known trademarks demonstrates bad faith in the registration of the <kamatsu.com> domain name. (See Doctor.Ing.h.c.F.Porsche AG v. Stoneybrook Inv. Ltd., WIPO Case No. D2001-1095; Microsoft Corp. v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501; and Ameriquest Mortgage Co. v. Phayze Inc,. WIPO Case No. D2002-0861). With regard to the final element that the Respondent must be shown to have used the disputed domain name in bad faith, the Complainant asserts that this is satisfied by the Respondent using the <kamatsu.com> domain name to knowingly and willfully promote direct competitors of KL and of the Complainant via a collection of links to the competitors’ websites. (See Popular, Inc. v. Henry Chan, NAF Claim No. FA183739; Bedford Fair Apparel, Inc. v. Henry Chan, NAF Claim No. FA157322; and Technology Props., Inc. v. Personal, NAF Claim No. FA96569). Furthermore, the Complainant argues that the Respondent’s apparent participation in “click-through” advertising programs offered by various well-known search engines for money consideration also shows that the Respondent wrongfully capitalizes on the <kamatsu.com> domain name. (See Joe David Graedon v. Modern Limited - Cayman Web Development, WIPO Case No. D2003-0640; The Sportsman’s Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116; and Six Continents Hotels, Inc. v. Asia Ventures, WIPO Case No. D2003-0659). Finally, the Complainant argues that the <kamatsu.com> domain name, being identical in sound and virtually identical in appearance to the KOMATSU trademark, is so obviously indicative of the Complainant’s products and services that the Respondent’s use of the disputed domain name would inevitably lead to confusion of some sort. This is evidence of use in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

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

2. The 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.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to prove that its parent company KL has registered trademark rights in the KOMATSU mark in the United States of America and the Complainant has by a license obtained the rights to use the KOMATSU mark in connection to goods or services in the United States of America and elsewhere.

The disputed domain name <kamatsu.com> and the Complainant’s trademark KOMATSU differ only in the letters “a” and “o”. Comparing the disputed domain name and the Complainant’s mark, the Panel finds that the two are similar visually and almost identical orally.

The Panel thus finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.”

The Panel finds that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests in the domain name. In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent is unable to adduce evidence that he has rights or legitimate interests in the said domain name.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:

(i) the Respondent has not provided evidence of good faith use of the domain name <kamatsu.com> or reasons to justify the choice of the word KAMATSU in its business operations;

(ii) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark; and

(iii) the mark KOMATSU is a well known mark in the relevant sector of construction equipment and services. Consequently, it is not one that traders would legitimately choose unless for the sole purpose to create an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.

After carefully considering the contentions of the parties and the evidence adduced, the Panel concludes that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case, and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and has been using the disputed domain name in bad faith.

The Panel finds the Complainant’s trademark KOMATSU to be a well-known trademark in the relevant sector of manufacturing and selling of construction and mining equipment, industrial machinery and vehicles, and electronics products. Therefore, the Panel accepts the Complainant’s submission that the Respondent had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name.

It is also important to note that the disputed domain name <kamatsu.com> resolves to the Respondent’s website on which there is no apparent genuine offering of goods and services. The website merely offers a collection of links to the Complainant’s competitors’ websites. Given that the disputed domain name and the Complainant’s mark are found to be confusingly similar to each other, there is a strong possibility that the disputed domain name <kamatsu.com> is used to divert Internet users seeking the Complainant’s website to these other competing websites. In the absence of evidence to the contrary and acceptable justification from the Respondent, the choice in the disputed domain name and the conduct of the Respondent as far as the website to which the domain name resolves are indicative of usage of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third and final part of test.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kamatsu.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: September 13, 2005