WIPO Domain Name Decision: D2006-0422

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orix Kabushiki Kaisha v. Noldc Inc.

Case No. D2006-0422

1. The Parties

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

The Respondent is Noldc, Inc., New Orleans, Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <orixclub.com> is registered with Domain Contender, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2006. On April 5, 2006, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the domain name at issue. On April 5, 2006, Domain Contender, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details for the administrative, billing, and technical contact and confirming that the Uniform Domain Name Dispute Resolution Policy applies. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed amended Complaint on April 12, 2006. The Center verified that the amended 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 April 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2006.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on May 18, 2006. 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

Orix Corporation was established on April 17, 1964, in Osaka, Japan. At that time the Complainant’s name was Orient Leasing Co., Ltd. (OLC). In June 1988, the Complainant announced the change of its name to Orix Kabushiki Kaisha, whose name is English is Orix Corporation. Legally the name was changed on April 1, 1989.

Since its establishment in 1964, the Complainant has been active both in Japan and other countries in the areas of leasing, real estate financing and management, insurance, housing loans, mortgage securities, venture capital finance, securities brokering, international resort development and investment, professional baseball club management, and financial services.

In 1990, Orix Credit Corporation was established in Tokyo for credit cards business. In 2004 several companies merged into Orix Club Corporation engaged in the same business. Since June 15, 2005, Orix Credit Corporation has used the ORIX CLUB CARD trademark for its new card loan service targeting presidents of small and medium-sized enterprises and individual business owners.

Since 1988 Complainant started another group of companies under the name “Orix Braves Corporation” for managing a professional baseball club under the name “Orix Braves Baseball Club” by acquiring the “Hankyu Braves Baseball Club”. In 1990 the group company’s name was changed to “Orix Baseball Club Co., Ltd.” The fan club of the baseball club is the “Orix Buffaloes Club”, which is named after the “Orix Buffaloes”, i.e., the current nickname of the baseball club (Annex 22 to the Complaint).

The Complainant began its overseas expansion with the establishment of its first overseas office in Hong Kong in 1971, followed by Singapore (1972), Malaysia (1973), USA (1974), Indonesia (1975), South Korea (1975) and the Philippines (1977) (Annex 7 to the Complaint). According to The Forbes 2000 the Complainant was selected as one of “The World’s Leading 2000 Companies”. Moreover, the Complainant raised its rank in the Forbes 2000 ranking from 499th place in 2004 to 409th place in 2005 (Annex 27 to the Complaint).

Since April 1970, the Complainant is listed with several Japanese stock exchanges and since September 1998, Orix is listed with the New York Stock Exchange (Annex 33 to the Complaint).

Since 1990, the Complainant holds a large number of registrations and pending applications for the trademarks comprising or containing the word “Orix” in Japan and other countries in respect of numerous classes of goods and services, including financial services in Class 36. As of the filing date of this Complaint, the number of the Complainant’s trademark registrations and pending applications in Japan is 115, and the number outside Japan, namely in 27 countries or regions, is 169. Among them, Japanese Trademark Registration No.4656162 for “ORIX & Design” (Annex 4 to the Complaint), U.S. Trademark Registrations Nos. 1861971, 1861997, 2110048, and 1861205, all for “ORIX & Design” (Annex 5 to the Complaint) are the most relevant to this Complaint. A list of the Complainant’s other Japanese trademark registrations and pending applications, and printouts from the online trademark database of the Japan Patent Office, are provided as Annex 4 to the Complaint. In addition, a list of the Complainant’s other trademark registrations and pending applications outside Japan, and photocopies of the registration certificates or printouts from the online trademark database of the relevant authority in each country or area are provided as Annex 5 to the Complaint.

International Association for the Protection of Intellectual Property of Japan (AIPPI Japan) include trademark ORIX among famous trademarks in Japan (Annex 42 (2) to the Complaint).

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: <orixclub.jp>; <orix.jp>; <orix.co.jp>; <orix.com>; <orix.net>; <orix.org>; <orix.biz>; <orix.info>; and orix.jobs>. A list of the domain names owned by the Complainant and its group companies, and printouts of the relevant Whois database are provided as Annex 6 to the Complaint.

The Respondent registered the disputed domain name on September 20, 2004.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name <orixclub.com> is confusingly similar to the trademark of the Complainant:

- The Complainant has registered trademark ORIX and ORIX & Design in Japan and 27 other countries for numerous classes of goods and services since 1990.

- The names ORIX and ORIX CLUB are known worldwide, in particular after 1998 when Orix became listed with the New York Stock Exchange.

- The Complainant and its group companies are the registrants of a large number of domain names containing the word “Orix”, including: <orixclub.jp>; <orix.jp>; <orix.co.jp>; <orix.com>; <orix.net>; <orix.org>; <orix.biz>; <orix.info>; and <orix.jobs>.

- The Complainant and its group of companies hold rights to corporate names containing the word “Orix” including “Orix Corporation”, “Orix Baseball Club” and similar logos.

- Although the disputed domain name is not identical to the Complainant’s registered trademark it is confusingly similar to it.

- The disputed domain name <orixclub.com> differs from the Complainant’s trademark “ORIX merely through the addition of the generic or descriptive word “club” and the generic top-level designation “.com”. In the domain name <orixclub.com>, “Orix” is the most unique and distinctive part, having the only source-identification function within the domain name, and thus, the domain name must be considered as being identical or confusingly similar to the Complainant’s trademark ORIX (see Kirkbi AG v. Michele Dinoia WIPO Case No. D2003-0038).

- It should also be noted that the Complainant is using the word “CLUB” in its generic sense, such as “ORIX Club Corporation”, “ORIX CLUB CARD”, “ORIX CLUB”, “ORIX Baseball Club Co., Ltd.”, or “ORIX Buffaloes Club”.

- In addition, when considering the similarity between the disputed domain name and the Complainant’s trademark, the high degree of recognition of the Complainant’s trademark is an important factor (see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh WIPO Case No. D2004-0488).

- The Complainants submits that the disputed domain name is identical or at least confusingly similar to the trademark of the Complainant, since the word “club” is a generic world and suffice “.com” is not an identifier.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Respondent is not, either as an individual, business or other organisation commonly known under the names “Orix” or “Orixclub.

- The Complainant has not licensed or otherwise permitted the Respondent to use its trademark ORIX or to apply for any domain name incorporating this name.

- The Respondent has no other business relationships with the Complainant.

- The Respondent is using the domain name for a Japanese website ”www.orixclub.com”, providing a search engine (Annex 45 to the Complaint) and this use is not connected with bona fide offering of goods and services.

- The Complainant submits that the Respondent does not have rights or legitimate interested in the disputed domain name.

(b) The domain name was registered and is being used in bad faith:

- At the time of registration on September 20, 2004, the Respondent clearly knew of the Complainant’s prior rights when registering disputed domain name.

- The Respondent has active website misusing the Complainant’s trade name and trademark by intentionally diverting the Internet users who are attempting to reach the Complainant’s website to various competing websites offering for sale services or products similar to those provided by the Complainant.

- Furthermore, considering that the Respondent is a domain name escrow service provider who engaged in the business of facilitating the sale of domain names belonging to third parties (Annex 46 to the Complaint), it can be inferred that in its business the Respondent knew of the Complainant’s ORIX trademark’s value and then registered the domain name <orixclub.com> with the purpose of selling it to third parties, including the Complainant and its group companies.

- The Respondent, while being an American company, has built its website “www.orixclub.com”, using Japanese language only. This fact clearly shows that the Respondent registered <orixclub.com> in bad faith with full knowledge of the Complainant’s ORIX trademark and its activities, as well as with the intention of diverting Internet users who are attempting to reach the Complainant’s website, to various competing websites offering for sale services or products similar to those provided by the Complainant.

- The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as noted, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Respondent’s default does not automatically result in a decision in favour of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

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

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

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, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has proved rights to registered trademarks ORIX and “ORIX & Design”.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ORIX. The fact that the disputed domain name has additional generic word “club”, in the Panel view, does not change the overall situation.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802).

In the UDRP case Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038, the Panel concluded:

“The addition of the generic word “club” does nothing to detract from the instant identification with Complainant conveyed by the mark and instead suggests a club for people interested in Complainant’s toys, precisely the service provided by Complainant under its LEGO mark at its <lego.com> website. …

Accordingly, the Panel finds the disputed domain name is confusingly similar to Complainant’s famous LEGO mark.”

The Panel therefore concludes that the Complainant has satisfied its burden of proof under Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant’s assertions, it is up to the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name.

According to Paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a Respondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing evidence under Paragraphs 4(c)(i-iii) of the Policy. By not responding to the Complainant’s contentions the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

Firstly, there is no evidence that, before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services. The Respondent does not use the domain name in connection with the bona fide offering of goods and services, according to the standards suggested in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

According to the documents submitted by the Complainant, the Respondent is using the domain name for a Japanese website “www.orixclub.com” providing a search engine (Annex 45 to the Complaint). This website includes several clickable items, such as “Job offers”, “Qualifications”, “Insurance”, “Credit cards”, and the like, and by clicking each item, Internet users can narrow the search. For example, if the “Insurance” item is used, the search results will provide links to various websites of insurance companies, including the Complainant’s group company, Orix Life Insurance Corporation, at “www.orix.co.jp”, as well as its competitive companies, such as Alico Japan, at “www.alicojapan.com”, American Home Direct at “www.americanhome.co.jp”, and the like.

The website itself does not offer any goods or services, but merely provides links to other websites.

The Panel finds no evidence that Respondent was using or is using the disputed domain name for a legitimate offering of goods and services.

Secondly, there is no evidence that the Respondent has been commonly known by the disputed domain name.

There is no information that the Respondent may be known under the disputed domain name as its business name or its company name. The Complainant contends the Respondent is not commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on September 20, 2004 (Annex 2 to the Complaint). The Complainant’s mark ORIX is known in Japan and internationally since the 1990is.

The Panel believes that the Respondent knew about the Complainant’s name and trademark ORIX at the time of disputed domain name registration. Moreover, the Panel infers that the Respondent knew about various companies within the Complainant’s group of companies acting under “Orix Club” name or logo.

Therefore, regarding these facts, it is the Panel’s view that the Respondent most probably registered the disputed domain name with awareness of the Complainant’s products and services and its quality and reputation.

Thus, the Panel finds that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of services under Paragraph 4(c)(i) the Policy. To the contrary, it suggests that the disputed domain name has been used in bad faith (see below).

Furthermore, the Panel draws an adverse inference from the Respondent’s failure to respond to the Complaint.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no legitimate rights or interests in the disputed domain name.

C. Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that the Respondent has registered and used a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its 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 its 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 its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has acted in bad faith because the disputed domain name was registered and used primarily for the purpose of confusing the public and diverting public attention from the Complainant’s official website to the Respondent’s website for potential commercial gain.

According to the evidence submitted by the Complainant the home page of the website associated with the disputed domain name <orixclub.com> diverted Internet users attempting to reach the Complainant’s website to various competing websites offering for sale services or products similar to those provided by the Complainant.

The Panel’s independent search shows that current use of the website “www.orxclub.com” is practically the same. It is clear that the Respondent continues to use the disputed domain name for a website, which may be described as a parking website, the main function of which being to divert the Internet users to other websites.

The Panel finds that the Complainant presented circumstantial evidence that the circumstances described in Paragraph 4(b)(iv) of the Policy are present in this case.

The fact that the Respondent’s use of the disputed domain name has created a confusion with the Complainant’s product and trademark under Paragraph 4(b)(iv) of the Policy indicates that the disputed domain name has been used and is still used in bad faith.

The fact that the Respondent failed to respond to the Complaint, in the Panel’s view, adds to the arguments in favour of the Respondent’s bad faith.

The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

The Panel decides that the Complainant has proven each of the three elements in Paragraph 4(a) of the Policy. In accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain name <orixclub.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist

Dated: June 5, 2006