WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OMRON Corporation v. Javier Crespo Cebrian

Case No. DNAME2011-00002

1. The Parties

The Complainant is OMRON Corporation, Kyoto, Japan, represented by Sanderson & Co, the United Kingdom of Great Britain and Northern Ireland.

The Respondent is Javier Crespo Cebrian, Albacete, Spain.

2. The Registration and Registrar

The disputed domain name <omron.name> is registered with SAU Interdomain.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2011. On June 29, 2011, the Center transmitted by email to SAU Interdomain a request for registrar verification in connection with the disputed domain name. On July 8, 2011, SAU Interdomain transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .NAME Eligibility Requirements Dispute Resolution Policy (the “ERDRP”), the Rules for the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”), and the WIPO Supplemental Rules for Eligibility Requirements Dispute Resolution Policy (the “Supplemental ERDRP Rules”).

On July 18, 2011, the Center informed the parties that the Complaint had been submitted in English whereas the language of the registration agreement for the disputed domain name was Spanish and requested the parties to translate the Complaint or file a request that English to be the language of the proceedings. In this regard, on July 21, 2011, the Complainant requested English to be the language of the proceedings. However, the Center did not receive any communication from the Respondent.

On July 18, 2011, the Center also informed the Complainant that according to ERDRP Rules, paragraph 3(b) and WIPO Supplemental ERDRP Rules, paragraph 3(c), the Complaint should be submitted in hard copy.

In accordance with the ERDRP Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2011. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2011. The Respondent did not file any Response.

The Center appointed Pablo Palazzi as the sole panelist in this matter on October 25, 2011. 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.

4. Factual Background

Complainant is OMRON Corporation (“Omron”), an entity organized under the laws of Japan whose principle place of business is Kyoto, Japan. According to its website Omron was established in the year 1933 and incorporated in 1948. Complainant main activity is divided in five areas: industrial (factory) automation, electronic components, automotive electronics, social systems and healthcare.

Complainant is the owner or the trademark OMRON registered in several jurisdictions:

Trademark	Country	Registration No.	Application Date	Registration Date
OMRON	European Union	000216721	01/04/1996	07/01/1999
OMRON	United States of America	0984928	20/09/1971	28/05/1974
OMRON	Japan	2504071	07/03/1990	26/02/1993
OMRON	Japan	0622187	26/06/1961	29/07/1963
OMRON	Japan	1742268	11/03/1982	23/01/1985

No additional information was provided in the Complaint.

The disputed domain name was created on May 5, 2006.

5. Parties’ Contentions

A. Complainant

Complainant submits that the dispute is properly within the scope of the ERDRP and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement pursuant to which the Registered Name was registered incorporates the ERDRP.

Complainant argues that (i) the name corresponding to the registered domain name, <omron.name>, is not the legal name of the Respondent as an individual; (ii) the name corresponding to the registered domain name is not the name of a fictional character in which the Respondent has trademark or service mark rights; (iii) the Respondent has not been commonly known by the name corresponding to the registered domain name.

Complainant furthermore submits that it meets the Eligibility Requirements for Defensive Registrations in the .NAME Registration Restrictions, including in particular that the name corresponding to the registered domain name is identical to a valid and enforceable trademark or service mark registration having national effect prior to April 16, 2001, of which the Complainant is the owner.

The Complainant submits a list of trademark registration in the European Union, the United States of America and Japan, all of them registered prior to the year 2001. Complainant requests as a remedy that <omron.name> be registered in the name of Complainant as a Defensive Registration.

B. Respondent

Respondent did not reply to the Complainant’s contentions. It has therefore not contested the allegations of Complaint and the Panel shall decide on the basis of Complainant’s submissions, and all inferences that can reasonably be drawn there from.

6. Discussion and Findings

6.1. Language of the Proceedings

The language of the Registration Agreement for the registered domain name was Spanish. Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

Complainant requested English to be the language of the proceedings. Complainant stated that it is a japanese company located in Japan and that the representative of the Complainant has no facility with the Spanish and Respondent is believed to be adequately versed in English. Complainant also argues that it would place an undue burden on Complainant to translate all documents when the burden is already on Complainant to make the Complaint and pay the fee. Complainant concludes that the balance of equity seems best served by proceeding in English.

There was no answer from Respondent with respect to the issue of the language of the proceedings.

The Respondent was given a fair chance to object Complainant’s request and has not done so. In light that there was no response by Respondent, and that Complainant would be unfairly disadvantaged by being forced to translate all the documents of the case into Spanish, in accordance with ERDRP Rule 11, the Panel sets the language of this proceeding to be English.

6.2. Eligibility Requirements for a Personal Name domain name registration

Complainant has brought this Complaint under paragraph 4(a)(i) of the ERDRP, on the ground that Respondent does not satisfy the Eligibility Requirements for a Personal Name domain name registration.

Paragraph 4(b) of the EDRP lists three elements that Complainant must prove to succeed in a challenge brought under the EDRP:

(a) the name corresponding to the registered name is not the legal name of the Respondent;

(b) the name corresponding to the registered name is not the name of a fictional character in which the Respondent has trademark or service mark rights;

A. Respondent’s legal name

According to the Registrar, the registrant of the registered domain name is Javier Crespo Cebrian. Therefore, it must be assumed, in the absence of any evidence or allegation to the contrary, that this is the legal name of Respondent. Since “omron” is not the legal name of Respondent, the Panel finds that Complainant has met its burden of proof for the first element under paragraph 4(b)(i) of the ERDRP.

B. Fictional character in which the Respondent has rights

Complainant has submitted that "omron" is not a fictional character in which Respondent has rights. In the absence of any evidence from Respondent to the contrary, the Panel is satisfied that this submission is correct.

C. Name by which the Respondent is commonly known

Complainant submits that Respondent is not commonly known under the name "omron" In the absence of any evidence from Respondent to the contrary, the Panel is satisfied that this submission is correct.

Therefore, the Panel is satisfied that Complainant has proven each of the three elements of paragraph 4(b) of the ERDRP in relation to the registered domain name <omron.name>. Therefore, the Respondent does not comply with the Eligibility Requirements of the ERDRP and the Remedies of paragraph 5(f) of the ERDRP apply.

6.3. Complainant’s Eligibility for the Registered Name as a Defensive Registration

Complainant requests that the registered domain name be registered in its name as Defensive Registration. For this remedy to be available, Complainant must satisfy the requirements of paragraph 5(f)(i)(C) of the ERDRP. This means that Complainant must meet the Common Defensive Registration Eligibility Requirements.

According to Paragraph 2(b) of the Eligibility Requirements for Phase I Defensive Registrations of the .NAME Restrictions, the name must correspond to a valid and enforceable trademark or services mark registration having national effect that issued prior to April 16, 2001, in which the Complainant has rights.

This means, in particular, that the name is identical to the textual or word elements of Complainant’s trademark or service mark.

Complainant has submitted evidence of its rights in registrations in the United States of America, Japan and in the European Union of the trademark OMRON. All these trademarks have been registered before April 16, 2001. Complainant’s trademark OMRON is identical to the domain name at issue. Consequently, Complainant satisfies the requirements of paragraph 5(f)(i)(C) of the ERDRP.

7. Decision

The Panel finds that Complainant has proven each of the three elements in paragraph 4(b) of the ERDRP in relation to the registered domain name <omron.name>. Therefore, in accordance with paragraph 5(f) of the ERDRP and paragraph 15 of the ERDRP Rules, and in accordance with the request of Complainant contained in the Complaint, the Panel orders that the .NAME Registration <omron.name> be cancelled in the name of Respondent and registered as a Defensive Registration in the name of Complainant, provided that upon cancellation of the Registered Name the Complainant pays any applicable registration fees and satisfies other applicable Common Defensive Registration Eligibility requirements.

Pablo Palazzi
Sole Panelist
Dated: November 8, 2011