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ORIX Kabushiki Kaisha v. Namegiant [2005] GENDND 759 (26 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ORIX Kabushiki Kaisha v. Namegiant

1. The Parties

The Complainant is ORIX Kabushiki Kaisha, Tokyo, Japan, represented by Saegusa International Patent Office, Osaka, Japan.

The Respondent is Namegiant, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <orix.net> is registered with ! $ ! Bid It Win It, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2005. On February 28, 2005, the Center transmitted by email to ! $ ! Bid It Win It, Inc. a request for registrar verification in connection with the domain name at issue. On March 12, 2005, ! $ ! Bid It Win It, 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 March 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2005.

The Center appointed John Terry as the sole panelist in this matter on May 12, 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 has set forth an extensive factual background supported by numerous and thorough annexures. None of this material is contested by the Respondent. The Panel finds the following principal factual matters established as set out in the Complaint:

A. The Complainant owns a large number of registrations and pending applications for the trademarks comprising or containing the word “ORIX” in Japan and overseas in respect of an extensive range of goods and services, including financial services in Class 36. The number of the Complainant’s trademark registrations and pending applications in Japan exceeds 180, and the number outside Japan, namely in more than 24 countries or regions, exceeds 157. Among them, the following trademark registration is most relevant – USA Registration No. 1559228 for ORIX in class 36.

B. The Complainant and its group companies are the registrants of a large number of domain names containing the word “orix”. Among them, the following are the most relevant to this Complaint, because these are, in their main parts, identical to the disputed domain name <orix.net>:

<orix.co.jp>;
<orix.jp>;
<orix.co.uk>;
<orix.com>
<orix.biz>;
<orix.info>; and
<orix.org>.

C. On April 1, 1989, the Complainant changed its legal name from Orient Leasing Co., Ltd. (OLC) to ORIX Kabushiki Kaisha, whose English name is ORIX Corporation. On the same date or after that, the Complainant’s extensive group companies also changed their legal names to those containing the word “ORIX”.

D. At the time that the disputed domain name was first registered, i.e., as of August 31, 2004, it appears to have belonged to eNom, Inc. The disputed domain name then appears to have been transferred to the Respondent, Namegiant, during the period from September 9, 2004, to September 30, 2004. This is inferred from the fact that as of September 9, 2004, eNom, Inc. was the registrant of the disputed domain name, while as of September 30, 2004, the present Respondent became the new registrant.

E. With regard to eNom, Inc., the Complainant presents the following information:

1. It is an Internet service provider, located at Bellevue, Washington, United States of America (Annex 42, i.e., printout from the Website of eNom, Inc.);

2. It was the prior registrant of the disputed domain name <orix.net> at least as of September 9, 2004, as stated above in this Section C; and

3. It is the registrar of the domain names listed below, which are owned by the Complainant’s group companies in the United States. These domain names are all active.

State	Domain Name	Registrant	Ownership of ORIX	Registration Date YY/MM/DD
United States	orix.com	ORIX USA Corporation	100	1996/11/21
	orixusa.com			2001/09/07
	orixfin.com	ORIX Capital Markets, LLC.	100	2001/09/04
	orixcm.com			2001/08/13
	orixre.com	ORIX Real Estate Equities, Inc.	100	1997/02/05

F. Even since the disputed domain name was transferred from eNom, Inc. to the Respondent, Namegiant, the “www.orix.net” web site has remained unchanged. The present site still posts the text “Welcome to Orix.net　This domain is for sale!　Make an offer...submit”.

G. The Respondent Namegiant describes itself as a domain name broker at the web site “www.namegiant.com”.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant firstly contends that the characterizing part of the present domain name ‘orix’ has become a famous trade mark (ORIX) which is an invented word as well as an inherently distinctive and strong trade mark, used extensively in relation to a range of financial services. The corporate name “ORIX” was adopted April 1, 1989, and extensive promotion of the business subsequently occurred in many countries. The Complaint particularizes very substantial revenues from the conduct of business as well as advertising expenses. The Complainant contends that the trademark ORIX has become famous in many countries and this status was achieved long before the registration date of the disputed domain name, namely August 31, 2004.

The Complainant further contends that the Respondent cannot demonstrate any legitimate interest in the disputed domain name <orix.net>. The Respondent has no relationship with or permission from the Complainant for use or registration of the ORIX trademark. The Respondent has never been commonly known by the disputed domain name, and has never developed any legitimate goodwill in association with the disputed domain name.

The Complainant further contends that the disputed domain name <orix.net> was acquired and is being used by the present registrant, the Respondent, in bad faith.

The Complainant submitted that, having regard to all the circumstances mentioned above, it should be concluded that the Respondent’s registration of the disputed domain name by way of acquiring it from the prior registrant, eNom, Inc., and the Respondent’s use of the domain name were in bad faith.

Furthermore, the Respondent registered and used or is using the disputed domain name <orix.net> in bad faith, primarily for the purpose of selling, or otherwise transferring, the domain name registration to the Complainant or others for valuable consideration in excess of the out-of-pocket costs directly related to the domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has clearly established it has rights in the trademark ORIX as well as ORIX together with a design component and the Panel holds that the present domain name <orix.net> is identical to the trade mark of the Complainant.

The disputed domain name <orix.net> differs from the Complainant’s trademark ORIX merely through the addition of the generic top-level designation “.net”. The domain name must therefore be considered identical to the Complainant’s ORIX trademark. Regarding this, the Complainant cited Kyobo Life Insurance Co., Ltd. v. Max, WIPO Case No. D2003-0008, where the UDRP panel concluded:

“For the purposes of this comparison, it is appropriate to ignore the “.com” suffix in the disputed domain name.”

The present Panel adopts and follows this principle and also adopts and follows the principle cited in Bayer AG v. Daniel H. Davies, Interplanetarium Corp.,WIPO Case No. D2003-0908, where the UDRP panel concluded:

“Thus, having eliminated the gTLD “.com” for the purpose of conducting this analysis, the Panel finds that the disputed domain name is identical to the Complainant’s trademark.”

Furthermore, it is clear that, through registration and use of the ORIX trademark, the Complainant has rights to such trademark.

The Panel concludes that the first element of the Policy is met.

B. Rights or Legitimate Interests

Considering that none of the circumstances in paragraph 4(c) of the Policy are applicable according to the case file and in view of the factual circumstances outlined above, the Panel finds that the Respondent does not have and has never had any rights or legitimate interests in respect of the disputed domain name <orix.net>.

C. Registered and Used in Bad Faith

The Panel finds that the acquisition and use by the Respondent was in bad faith for the purpose of selling the disputed domain name for consideration in excess of the costs of registration. As a factual matter, the Panel finds as established the facts stated above, namely that the Respondent is a domain name broker who had or should have had prior knowledge of the Complainant’s trademark and the website “www.orix.net” has continued to offer the domain name for sale.

The Panel adopts and follows the principles in Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642, where the UDRP panel concluded:

“The Panel concludes that the domain name in dispute was registered and used in bad faith, within the meaning of the applicable policy. The language at such site – “This domain is for sale” – clearly suggests that Respondent registered the domain name primarily for the purpose of selling it to Complainant or to one of its competitors for valuable consideration in excess of Respondent’s out-of-pocket expenses.”

The fact that an active website does not exist at that site -- in other words, that the domain name has been passively held -- does not mean that the domain name has not been “used”, as that term has been defined by previous UDRP panels. The passive holding of a website has been found to create an inference of “bad faith” use in many other UDRP decisions. (See, e.g., Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004).

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, <orix.net> be transferred to the Complainant.

John Terry
Sole Panelist

Dated: May 26, 2005