Mikimoto (America) Co. v. Asanti Fine Jewellers LTD.
Mikimoto (America) Co. v. Asanti Fine Jewellers]
[Indexed as: MIKIMOTO.COM]
Administrative Panel Decision
Case No. AF-0126
Commenced: 14 February 2000
Judgment: 8 April 2000
Presiding Panelist: Llewellyn Joseph Gibbons
Domain name - Domain name dispute resolution policy - U.S. Trademark - Famous marks - Legitimate interest - Identical - Confusingly similar - Consumer confusion - Non-commercial use - Disturbing competitor - Disrupting competitor - Disclaimers - Disclaimers of association - Meta tag warnings - Bad faith registration - Bad faith use.
Complainant was the registrant of two United States trademarks on which the disputed domain name was allegedly based. Respondent registered the domain name, mikimoto.com. Complainant alleged that domain name was identical to registered trademark and was, therefore, registered and used in bad faith.
Held, Name Transferred to Complainant.
Respondent's -- Asanti -- registered domain name, MIKIMOTO.COM, is identical or confusingly similar to a trademark in which Complainant, MIKIMOTO, has rights. The domain name refers to Kokichi Mikimoto, the creator of the cultured pearl. A search of the Internet reveals a pathetically scarce amount of information on this great man's life, hence Respondent's interest in providing a non-commercial biographical web site. Respondent claims that its usage of the challenged domain name is not a prohibited trademark usage as an adjective, that is referring to the trademark associated with the cultured pearl product, but rather the permitted use of the domain name as a proper noun, referring to the man.
Although this is the type of domain name that naturally leads to consumer confusion, it is particularly telling that Respondent did not offer to take reasonable measures, for example disclaimers of association with Complainant or warnings in meta tags, to help consumer confusion. Nor does Respondent document any preparations to use the challenged domain name. Therefore, the use of the domain name is not in the legitimate interest of Respondent.
Respondent has registered one prior disputed domain name, charleskrypell.com.
A single prior instance of registering a domain name to keep the holder
of the trademark from using it coupled with the instance before the arbitrator
may be sufficient under some circumstances to constitute a pattern of conduct.
Respondent attempted to sell or leverage the disputed domain name for commercial
advantage or financial gain in excess of Respondent's reasonable out-of-pocket
expenses. Respondent acted in bad faith.
However, there is no evidence that Respondent registered the disputed domain name primarily for the purposes of disturbing or disrupting the business of a competitor. Respondent alleges that Mr. David Gasway of Mikimoto has repeatedly attempted to cajole and harass Asanti into giving Mikimoto (America) Co. the mikimoto.com domain name, and failing that, offered to purchase the domain name.
Policies referred to
Domain Name Dispute Resolution Policy, adopted August 26, 1999
Gibbons, Panelist: -
1. Parties and Contested Domain Name
Mikimoto(America)Co., LtdRespondent: Asanti Jewellers, Ltd
Domain name: mikimoto.com
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 14, 2000. The hardcopy of the Complaint Form was received on February 15th, 2000. Payment was received on February 15th, 2000. Upon receiving all the required information, eResolution's clerk proceeded to: · Confirm the identity of the Registrar for the contested Domain Name; · Verify the Registrar's Whois Database and confirm all the required contact information for Respondent; · Verify if the contested Domain Name resolved to an active Web page; · Verify if the Complaint was administratively compliant. The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information including the billing contact. The Contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant. The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on February 16, 2000. That date is the commencement date of the administrative proceeding. On February 17, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding. On March 7, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on March 20, 2000. On March 20, 2000, the Clerk's Office contacted Mr. L. Joseph Gibbons, and requested him to act as panelist in this case. On March 21, 2000, Mr. Gibbons, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On March 22, 2000, the Clerk's Office forwarded a user name and a password to Mr. Gibbons, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. On March 22nd, 2000, the parties, the Registrar and ICANN were notified that Mr. Gibbons had been appointed and that a decision was to be, save exceptional circumstances, handed down on April 7th, 2000. 3. Factual Background Complainant, Mikimoto (America) Co. is the registered holder of two United States trademarks on which the disputed domain name is allegedly based MIKIMOTO (U.S. Trademark Registration 645,389, registered May 14, 1957) and MIKIMOTO (U.S. Trademark Registration 829,077, registered May 23, 1967). Respondent Asanti Jewellers, Ltd. is a distributor of Mikimoto® cultured pearls. There is no dispute that Complainant owns MIKIMOTO as a trademark. Respondent registered the mikimoto.com as a domain name. For the sake of greater clarity, I have stated the factual allegations along with the parties' contentions below.
I have restated the parties' contentions in their own language while slightly editing for clarity and transitions.
Complainant, Mikimoto (America) Co. alleges that Respondant, Asanti Fine Jewellers, Ltd. registered the domain name mikimoto.com in violation of the Uniform Domain Name Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers. Complainant is the registered holder of two United States trademarks on which the disputed domain name is allegedly based MIKIMOTO (U.S. Trademark Registration 645,389, registered May 14, 1957) and MIKIMOTO (U.S. Trademark Registration 829,077, registered May 23, 1967). Complainant alleges that the domain name MIKIMOTO.COM is (apart from the generic Top Level Domain ". com" suffix) identical to the registered trademark MIKIMOTO. Complainant further alleges that Registrant/Domain-name holder ("Asanti") is not an owner, assignee, transferee, purchaser or licensee of any rights in the name MIKIMOTO. Complainant only permits Asanti to use the MIKIMOTO name specifically in connection with the promotion and resale of Mikimoto products at Asanti's retail place of business in San Marino, California. Complaint contends that Respondent, Asanti Fine Jewelers, Ltd. (Asanti or Respondent), has demonstrated its bad faith by:
1. Failing to notify or consult Mikimoto prior to Asanti's registering, as a domain name, Mikimoto's famous trademark: MIKIMOTO®.RESPONDENT
2. Certifying in its application to register MIKIMOTO.COM that such registration did not interfere with or infringe upon the rights of any third party, when Asanti knew or should have known that its registration would both interfere with and infringe upon Mikimoto's rights in MIKIMOTO®.
3. Refusing to relinquish MIKIMOTO.COM without payment by Mikimoto America of a substantial sum, well in excess of Asanti's out-of-pocket costs directly related to that domain name.
4. Attempting to use its ownership of MIKIMOTO.COM to coerce Mikimoto into committing to continue doing business with Asanti.
5. Threatening to sell MIKIMOTO.COM to an Internet speculator.
6. Preparing to launch, under the name MIKIMOTO.COM, a web site designed by Asanti without any input from or approval by Mikimoto.
7. Preparing to link that web site to Asanti's existing web site (ASANTI.COM), for the conscious purpose of associating the famous MIKIMOTO® trademark with Asanti's multi-line retail jewelry business and the other, non-Mikimoto brands of cultured pearls that Asanti sells.
8. Intentionally thwarting Mikimoto's plans to use MIKIMOTO.COM for Mikimoto's own web site, which is designed to promote MIKIMOTO® products and publicize the distributors (including Asanti) that sell those products at retail. Complainant seeks as a remedy to have the domain name mikimoto.com transferred to it.
Respondent, Asanti Fine Jewellers, Ltd., contends that it has not violated the Uniform Domain Name Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers. Respondent alleges that the domain name mikimoto.com refers to Kokichi Mikimoto, the creator of the cultured pearl and that a search of the Internet reveals a pathetically scarce amount of information on this great man's life, hence Respondent's interest in providing a non-commercial biographical web site. Accordingly, Respondent claims that its usage of the domain name mikimoto.com is not a prohibited trademark usage as an adjective but rather the permitted use of the domain name as a proper noun because Respondent's mikimoto.com website refers to the man and not trademark associated with the cultured pearl product. Respondent alleges that Mr. David Gasway of Mikimoto has repeatedly attempted to cajole and harass Asanti into giving Mikimoto (America) Co. the mikimoto.com domain name, and failing that, offered to purchase the domain name from us. Respondent denies telling Mr. Gasway either verbally or in writing, that the mikimoto.com domain name was for sale. Respondent states that: Yet, after his persistent badgering, in an attempt to keep the peace between our firms, I finally agreed to consider his offer. When he asked for a number, I off handedly mentioned that I didn't know, but that perhaps publishing a book in one's field of endeavor, regardless of subject, might bring about some increased recognition as an authority in the field. I have been published in trade journals before on the subject of management, and have found this to be the case. I thought perhaps that this might result in a rather modest increase of 5% in sales over the next ten years. This increase, I explained, was strictly hypothetical and simply assuming a byline on the author. There was never to be a direct link to the www.asanti.com website, as this was to be a strictly non-commercial site, but rather a copyright line. Mr. Gasway then made a proposal to us based on what he viewed as "my formula" for an increase in our pearl business. I responded to this with a more complete picture of our pearl business, again stating that I had no real interest in selling the domain name. No offer was ever made to sell the domain name. Respondent rejects allegations of bad faith claiming that:
(1) The domain name mikimoto.com has never been used in commerce or offered for sale.
(2) Mikimoto.com has never had any content that would interfere with the complainant's trademark rights.
(3) Mikimoto engaged in retaliatory business practices against Asanti because of the disagreement over the domain name. Only after Respondent mentioned that this was an unfair trade practice did Mikimoto resume shipping merchandise. As Mikimoto has shown a history of retaliating against Respondent, Respondent had no confidence that it would remain authorized agents even it transferred the domain name. Therefore, Respondent's desire for a guarantee against retaliation did not represent trading on the value of Mikimoto's trademark, rather an attempted to be treated the same as other distributors.
(4) Respondent based its claim to the charleskrypell.com domain name on creating a jewellery designer biography page. Respondent abandoned this idea because it lacked public interest. Again, the charleskrypell.com domain name was never offered to anyone for sale and was recently transferred without cost to Mr. Charles Krypell.
(5) Respondent never threatened to sell the mikimoto.com domain name to an Internet speculator, and in fact, none of the domain names owned by Respondent have ever been listed for sale, publicly or privately.
(6) Respondent has never exploited the commercial value of the domain name.
(7) Complainant made an offer to purchase the name in an effort to coerce us into trading on the value of their trademark so that they could bring action against us. (7) Any value Respondent would receive from the ownership of the domain name mikimoto.com would be because of authoring an online biography of a public figure, distinct from the word's trademark value.
(8) Respondent has a stake in maintaining the strength and integrity of the Mikimoto® brand product line.
(9) Contrary to Mr. Gasway's affidavit, Respondent did speak to representatives of Mikimoto (America) about jointly developing the site at the Couture Collection and Conference in 1997. That offer was flatly rejected.
(10) Mr. Gasway's offer of the kokichimikimoto.com web address as a suitable site for us to develop a biographical web site is patently bogus. This is evidenced by our telephone conversation of 6 March 2000 in which I agreed to give Mikimoto® the mikimoto.com web address if I could receive assurances that we would have no challenge from Mikimoto on the kokichimikimoto.com domain name. He could make no such assurances.
(11) The Internet is a medium that originated in educational institutions, allowing for the free dissemination of concepts, ideals and information. As a reference, it is unparalleled by a thousand libraries. Respondent seeks to use this medium to communicate the history of this great inventor to the world. Mikimoto already has two available domain names, one of which clearly speaks to their trademarked product line.
Under the Uniform Domain Name Dispute Resolution Policy (UDNDP Policy), the burden is on Mikimoto (America) Co. (Complainant) to prove each of three elements by a preponderance of the evidence. Mikimoto must prove that Asanti Fine Jewellers, Ltd. (Respondent) registered a domain name that is identical to or confusingly similar with Complainant's trademark or service marks, that Respondent has no rights or legitmate interest in the domain name, and finally, Respondent registered and used the domain name in bad faith. I will address each of these elements and the related defenses in turn.
(1) Asanti Fine Jewellers, Ltd.'s (Respondent) registered domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; The parties do not dispute that MIKIMOTO is a registered trademark in the United States. MIKIMOTO is registered under U.S. Trademark Registrations 645,389 and 829,077 (Annexes D and E). MIKIMOTO is a registered trademark of K. Mikimoto & Co., Ltd., 2 W. 46th St. New York, New York. Respondent registered mikimoto.com as a domain name (Annex C). I find that the Complainant's registered trademark is identical to or confusingly similar with Respondent's registered second level domain (SLD) name mikimoto. Accordingly, I find in favor of the Complainant on the first element.
(2) Respondent has no rights or legitimate interests in respect of the domain name; The UDNDP Policy provides examples of rights or legitimate interests. These examples include the bona fide provision or offer of goods or services prior to notification of the domain name dispute, brand name use or common law trademark rights, or noncommercial or fair use of the domain name. Because the parties do not raise any contentions that do not fall with the exemplar circumstances provided by the UDNDP Policy, I will limit my discussion to the applicability of each in turn.
(a) before any notice to Respondent of the dispute, Respondent's 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 There is no evidence that Respondent used the mikimoto.com domain to provide goods or services before the Complainant challenged Respondent's registration of the domain name. Respondent does not document any preparations to use the challenged domain name. Accordingly, I find that this is not a legimate interest of the Respondent.
(b) Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or Respondent does not claim to hold rights the