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Casio Keisanki Kabushiki Kaisha dba Casio Computer Co., Ltd v. Taizhou Kaixuan Entertainment Co., Ltd. [2005] GENDND 1973 (2 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Casio Keisanki Kabushiki Kaisha dba Casio Computer Co., Ltd v. Taizhou Kaixuan Entertainment Co., Ltd.

Case No. D2005-0870

1. The Parties

The Complainant is Casio Keisanki Kabushiki Kaisha d/b/a Casio Computer Co., Ltd, Tokyo, Japan represented by Kirkpatrick & Lockhart Nicholson Graham LLP, United States of America.

The Respondent is Taizhou Kaixuan Entertainment Co., Ltd., Taizhou Zhejiang, China.

2. The Domain Name and Registrar

The disputed Domain Name <chinacasio.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2005. On August 17, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the Domain Name at issue. On August 18, 2005, OnlineNic, Inc. d/b/a China-Channel.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 a Chinese translation of the Compliant on September 1, 2005. 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 September 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2005.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October 19, 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’s business was founded as “Kashio Seisansho” in Japan in 1946. The surname of the founder is “Kashio.” The company name “Casio Computer Co., Ltd.” was established in 1957. The Complainant operates a world-wide business, primarily in digital imaging products, wrist technology products such as watches and mobile phones, personal digital assistants, electronic musical instruments, calculators, and other consumer electronic products.

The CASIO trademark has been registered by the Complainant in most countries of the world for watches and many other goods. These registrations were obtained long prior to the registration of the disputed Domain Names. In the United States of America, the Complainant obtained numerous registrations of the CASIO trademark long before the disputed Domain Name was registered, for example, No. 951,877, dated January 30, 1973, No. 989,576, dated July 30, 1974, and No. 1,041,284, dated June 15, 1976 (for “electronic watches”). In the Complainant’s home country, Japan, it obtained many registrations of the CASIO trademark long before the registration of the disputed Domain Name, for example, No. 1,350,145, dated October 31, 1978. In China, where the Respondent is domiciled, the Complainant owns many valid and subsisting CASIO trademark registrations for watches, retailing services relating to watches, and other goods and services. The Complainant obtain these registrations long time before the Domain Name is registered.

Over the years, the CASIO trademark has become a famous mark which enjoys worldwide reputation. The CASIO trademark is listed in the publication of “Famous Trademarks in Japan.” Furthermore, in prior UDRP decisions, the CASIO trademark has been found to be “well-known” worldwide. See Casio Keisanki Kabushiki Kaisha v. Netfuture, WIPO Case No. DBIZ2002-00198 [domain name <casio.biz>]; Casio Keisanki Kabushiki Kaisha v. Jongchan Kim, WIPO Case No. D2003-0400 [domain name <casioshop.net>]; Casio Keisanki Kabushiki Kaisha v. Fulviu Mihai Fodoreanu, WIPO Case No. DRO 2003-0002 [domain name <casio.ro>]; Casio Computer Co., Ltd. v. Image Collection, Korean Domain Name Dispute Resolution Committee Case No. KR 2003-0011 [domain name <koreacasio.co.kr>]; Casio Computer Co., Ltd. v. Timepia, Korean Domain Name Dispute Resolution Committee Case No. KR 2003-0017 [domain name <casiowatch.co.kr>]; Casio Computer Co., Ltd. v. Rak-Kyun Choi, Korean Domain Name Dispute Resolution Committee Case No. KR 2003-0021 [domain name “casiokorea.co.kr”]; Casio Keisanki Kabushiki Kaisha, d.b.a. Casio Computer Co., Ltd. v. Baroli, S.L., WIPO Case No. D2005-0365 [domain names: <casiospain.com>, <casioeurope.com> and <tiendacasio.com>]. The CASIO trademark also became well known in China as a result of the Complainant’s sponsorship of a Japanese animated show “Astro Boy” broadcasted on China Central TV in 1979. The “CASIO Family Singing Contest” was also broadcasted on Shanghai TV for 11 years from 1982, which was sponsored by the Complainant. As a result, the CASIO name is widely recognized in China, both in English characters and in Chinese characters.

The Complainant uses <casio.com>, <casio.co.jp>, <world.casio.com> and other “casio” domain names as addresses for web sites which promote its businesses. These web sites can be accessed by the public throughout the world.

It has been brought to the Complainant’s attention that the Respondent has registered the disputed domain name <chinacasio.com> on August 7, 2004. The date of registration of the disputed Domain Name was subsequent to (a) the first use of the trademark and trade name CASIO by the Complainant, (b) the dates of registration of CASIO as, or as part of, a trademark by the Complainant in the United States of America, China and Japan, as well as in many other countries, and (c) the registration dates and dates of first use of the Complainant’s domain names <casio.com>, <casio.co.jp> and <world.casio.com>.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant contends that the disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has set forth its registered trademark rights in the mark CASIO throughout the world including China. The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark CASIO, because the “.com” portion of the disputed Domain Names must be disregarded when comparing a domain name with a trademark to determine their confusing similarity, and the disputed Domain Name encompasses the Complainant’s trademark CASIO in its entirety. See K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622, August 23, 2000 (trademark “K2r” vs. domain name <k2r.com>).

Furthermore, the added word “china” in the disputed Domain Name does not serve to distinguish it from the CASIO trademark of the Complainant because it is generic and/or descriptive. The addition of the geographic indicator “china” to the Complainant’s trademark does nothing to distinguish the Domain Name from the Complainant’s trademark. Instead, the public will conceive the word “china” merely as a descriptive reference to the geographical source or origin of the goods and services provided under the mark “CASIO.” Moreover, the use of a geographic indicator leads the consumer to the assumption that the Respondent is affiliated or associated with the Complainant. The consumer could easily conclude that the Respondent is associated with Complainant’s operations in China. Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628, August 11, 2000 (service mark WAL-MART v. disputed domain name <wal-mart-europe.com>); Lycos Europe N.V. v. RegionCo, WIPO Case No. D2000-1102, August 28, 2001 (trademark LYCOS v. disputed domain name <lycoseurope.com>).

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent owns no U.S. trademark or service mark registrations for CASIO or any similar term. Upon information and belief, the Respondent owns no Chinese registrations for the mark CASIO.

The Complainant’s CASIO trademark is a coined word with no descriptive significance, and it is not being used in a descriptive manner by the Respondent. It is not the personal name of the Respondent. The Respondent has never had any formal business relations with the Complainant and is not a licensee or an authorized distributor of the goods of the Complainant. Also, the Respondent is not operating a non-commercial web site which comments on the business or products of the Complainant. The Complainant has not authorized the Respondent to use or register CASIO as, or as part of, a domain name, trade name, service mark or other trade symbol.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. The Complainant contends that the Respondent registered the disputed Domain Name without the consent, license or authorization of or from the Complainant. The Complainant has never acquiesced, expressly or impliedly, in the use or registration of the disputed Domain Name by the Respondent. The Respondent has registered the disputed Domain Name with constructive notice of the Complainant’s U.S. trademark registrations of CASIO. The Complainant argues that in the Respondent’s home country, China, it is highly unlikely that the Respondent had no actual and/or constructive knowledge of the Complainant’s trademark and trade name CASIO in view of the Complainant’s global use and promotion of its trademark and trade name for many years, its registration and use of CASIO as a trademark in the United States of America, China, Japan and in many other countries, and its use of the CASIO house mark in several domain names.

The relevant pages from the Respondent’s web site <chinacasio.com> with an English translation have been adduced by the Complainant as further evidence before this Panel. On the Respondent’s website, the CASIO trademark and logo are displayed prominently on the home page. There is no disclaimer on the web site, i.e., no statement advising the public that the Respondent is not affiliated with the Complainant. The Complainant contends that the Respondent’s use of the CASIO trademark in connection with gambling devices, i.e., automatic mahjong machines, will tarnish the pre-existing goodwill of the Complainant’s famous trademark CASIO in the domestic and international markets. While the mere use of the Complainant’s trademark in the Respondent’s domain name would violate the UDRP, the Respondent’s further use of CASIO as a trademark for its own goods infringes the Complainant’s trademark (which is used and registered in China for many electronic products) and proves conclusively that the Respondent is acting in bad faith.

The Complainant also contends that the Respondent’s use of the word CASIO in the disputed Domain Name prevents the Complainant from reflecting its CASIO trademark in the “.com” domain together with the generic word “china”. The Respondent’s actions are disruptive of the Complainant’s business activities on the Internet because it prevents the Complainant from selling its products through web sites with the “.com” address and “chinacasio” is best suited to identify the Complainant’s online business. Also, the words “casio” and “china” are the ones most likely to be inputted into a search engine by members of the Chinese public who seek to buy the Complainant’s CASIO watches and other goods from the Complainant through an online store. The Respondent’s use of the disputed Domain Name will lead the public to a website selling CASIO brand products (which in this case are not even genuine CASIO watches) and this constitutes an intentional attempt to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and goods.

Considering the fame of the Complainant’s trademark CASIO, it is inconceivable that the Respondent could make any prominent use of the word “casio” in a domain name without creating a false impression of association with the Complainant and its business. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; see also Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. Any use of such domain name would be in bad faith because the Respondent would be trading on the goodwill of one of the world’s best-known trademarks. The Respondent did not innocently adopt the disputed Domain Name, but rather it intentionally chose the Domain Name which would trade on the established goodwill of the Complainant’s famous trademark CASIO, and the Respondent continues to use the Domain Name until now.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The Complaint was filed in the English language. On August 24, 2005, the Center sent a notification to the Complainant concerning the Language of Proceeding. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the registration agreement for the disputed Domain Name is Chinese. Accordingly, the Center requested the Complainant to provide the Center with satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English.

In response to the Center’s notification, the Complainant submitted a Chinese translation of the Complaint on September 1, 2005 to the Center.

Pursunant to the Rules, paragraph 11, and after considering the circumstances of the present case, the Panel decides that the proceeding should be conducted in the English language and should proceed henceforth in the English language.

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that the Complainant has taken all reasonable steps to bring the present proceeding to the attention of the Respondent. In particular, the Panel notes that the Complainant has promptly submitted a Chinese translation of the Complaint to the Center within the stipulated time frame. The Respondent has then been notified of the Complaint and its contents in the Chinese language. In the Complaint, the Complainant has alleged that the Respondent has no legitimate rights to the disputed Domain Name which is confusingly similar to the Complainant’s registered trademark and that the Respondent has registered and used the domain name in bad faith. However, the Respondent has failed to respond to the Complainant’s contentions. The Panel finds that the Respondent’s failure to respond to the Complaint might not be the result of the Respondent’s inability to understand the Complaint filed against him but an indication that he could not provide a satisfactory response to the allegations contained in the Complaint lodged by the Complainant.

B. Substantive Elements of the Policy

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;

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 Uniform Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the mark CASIO in many countries throughout the world including China. The disputed Domain Name comprises an exact reproduction of the Complainant’s trademark and the geographical prefix “China.” The Panel accepts the Complainant’s contention that the prefix “China” is generic and/or descriptive in nature and the addition of such a prefix to the trademark CASIO is non-distinctive. Anyone looking at the composition ‘chinacasio’ is likely to come to the conclusion that the word ‘China’ describes the geographical source or origin of CASIO’s products or services and that the Complainant is operating or doing business with the trademark CASIO in China.

Given the fame of the Complainant’s trademark and the fact that the Respondent is using the disputed Domain Name to sell electronic goods such as automatic mahjong machines, the Panel can readily see that there is a high probability that an Internet user who visits the Respondent’s website may conclude that the Complainant has presently expanded its business to the sale of automatic mahjong machines and that the Respondent’s website to which the disputed Domain Name resolves upon is in some way associated with the Complainant’s business particularly devoted to Internet customers in China.

The Panel therefore finds that the disputed domain name <chinacasio.com> is confusingly similar to a trademark or service mark in which the Complainant has rights.

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 to 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 to show cause that he has rights or legitimate interests to the disputed Domain Name.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed Domain Name:

(i) the Complainant’s trademark CASIO is a coined with no descriptive significance to the goods or services sold under it. Therefore, the Respondent could have been taken to be using the CASIO mark in a descriptive sense.

(ii) the Respondent has not provided evidence of a legitimate use of the domain name <chinacasio.com> or reasons to justify the choice of the word CASIO its business operations;

(iii) 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

(iv) the mark CASIO is a famous mark which enjoys a wide spread reputation in the relevant sector of electronics products such as watches, calculators, cameras, cell phones, cash registers, LCDs etc in many countries including China. Consequently, it is not one that traders would legitimately choose unless the purpose is 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 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) 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 Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 Respondent’s website or location or of a product.

After carefully considering the contentions of the Complainant and the evidence adduced before the Panel, 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 the Respondent has registered and used the disputed Domain Name in bad faith.

The Panel finds that the mark CASIO is a famous mark which enjoys a wide spread reputation in the relevant sector of electronic products such as watches, calculators, cameras, cell phones, cash registers, LCDs etc in many countries including China. Therefore, the Panel finds that the Respondent would have actual notice of the Complainant’s trademark rights at the time of the registration of the Domain Name. It would therefore have been pertinent that the Respondent provides a good explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed Domain Name is not one that traders would legitimately choose unless the purpose was to create an impression of an association with the Complainant.

It is important to note that the website which the disputed domain name resolves to is used to sell automatic mahjong machines. Given that (a) the Complainant’s trademark CASIO is a famous mark in the business of electronic equipment; (b) the Complainant also utilizes the Internet for the sale of its goods and services via registered domain names such as <casio.com>, <casio.co.jp> and <world.casio.com>; and (c) the disputed Domain Name and the Complainant’s mark CASIO are found to be confusingly similar to each other, it is reasonable to conclude that the disputed Domain Name <chinacasio.com> is used to divert Internet users seeking the Complainant’s website to the Respondent’s website. In the absence of evidence to the contrary and acceptable reasons from the Respondent, the choice of the disputed Domain Name and the conduct of the Respondent as far as the website on to which the Domain Name resolves are indicative of usage of the disputed domain name in bad faith. The Panel accepts the Complainant’s submission that this fact coupled with all the other evidence proves that the Respondent has registered and used the disputed Domain Name in bad faith.

Furthermore, the Panel also does not rule out the possibility that by adopting the a domain name which is confusingly similar to the Complainant’s and by liberally using the Complainant’s mark CASIO on his website in the absence of legitimate grounds, the Respondent is in fact taking an unfair advantage of the Complainant’s goodwill and reputation in trademark CASIO. This is, in the opinion of the Panel, a clear manifestation that the disputed Domain Name has been registered and used in bad faith by the Respondent.

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 <chinacasio.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: November 2, 2005