Japan Tobacco Inc. v. Yoshiki Okada

 [Indexed as: Japan Tobacco v. Okada]

WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: WIPO D2000-0492

Commenced: 6 June 2000
Judgement: 24 July 2000

Presiding Panelist: Teruo Doi

 Domain name – Domain name dispute resolution – Registered trademark – Worldwide recognition – Identical – No rights or legitimate interests – Registration for purposes of selling domain for profit – Registration and use in bad faith – Misleading public to believe connection between Complainant and Respondent.

Complainant identifies itself and its products with a JT logo. Complainant also owns trademark registration of JT for use in its cigarette business. This trademark has gained worldwide notoriety. Respondent registered the domain name JT.COM. Complainant made offers to purchase the domain from Respondent, who refused to transfer it for any sum. Complainant asks for transfer of the domain name in dispute.

Held, Name Transferred

The domain name in dispute is identical to Complainant’s widely used logo. Complainant registered the trademark, which has become known worldwide as a source of Complainant’s products.
The only reason the domain name was registered was for the purpose of selling it to another party for an unjustifiable profit. This is evidenced by the exchange of communication between the tech department of Complainant and Respondent, where the latter indicated an unwillingness to sell even for an exorbitant amount of money. Respondent has no rights or legitimate interests in the domain name, and registered and has been using the domain name in bad faith. 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Panel Decision referred to

Doi, Panelist: -
1. The Parties
The Complainant is Japan Tobacco Inc., a Japanese corporation with principal place of business at: 2-2-1 Toranomon, Minato-ku, Tokyo, Japan.
The Respondent is Yoshiki Okada, whose address is 4 Harotem Street, 46915 Rishpon, Israel, and also Virgin Islands Network, Waterfront Plaza, Road Town, Tortola, British Virgin Islands.

2. The Domain Name and Registrar
The domain name at issue is JT.COM. This Domain Name is registered with Network Solutions, Inc. ("NSI"), 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 24, 2000, by e-mail and in hardcopy.
The Acknowledgment of Receipt of the Complaint was sent by the Center to the Complainant on May 25, 2000.
The Center sent a Request for Registrar Verification to NSI on May 26, 2000, and received from NSI a Registrar Verification Response on May 30, 2000.
The Center, having confirmed, on June 4, 2000, that the formal requirements are met, sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent on June 6, 2000.
The Respondent has made no Response to the Complaint before the due date, and the Center sent a Notification of the Respondent's Default to the parties on June 27, 2000.
The Center issued a Notification of the Appointment of Administrative Panel and the Projected Decision Date on July 10, 2000.

4. Factual Background
The facts stated in the Complaint are as follows:
(1) The Complainant identifies itself and its products with a "JT" logo. Specimens of this logo in actual use is found in Annex C. 1 (front and back cover of "Japan Tobacco Inc. 1999 Annual Report"), Annex C.2 (front and back cover of "JT Corporate Profile" brochure) and Annex C.3 (cigarette packs bearing "JT" logo).
(2) The Complainant owns over 100 trademark registrations of "JT" throughout the world. The list of these registrations and sample-copies of the certificates of trademark registrations are found in Annex D.1 (computer printout of the list of "JT" trademark registrations in Japan), Annex D.2 (computer printout of the list of "JT" trademark registrations in various other countries), Annex D.3 (copy of the Certificate of Registration for Trademark "JT" in Switzerland), Annex D.4 (copy of the Certificate of Registration for Trademark "JT" in Israel) and Annex D.5 (copy of the Certificate of Registration for Trademark "JT" in the U.S.A.).
(3) The "JT" logo is widely used for cigarettes manufactured and sold by the Complainant. The Complainant sells annually billions of dollars of cigarettes bearing the "JT" trademark throughout the world. Thus, the Complainant's trademark "JT" has become well-known throughout the world and especially in Japan.
(4) The Complainant's first contact with the Respondent was made by Bill Summers working in the systems department of JT International in Switzerland. In the fall of 1999, Bill Summers asked the Respondent by e-mail whether or not the latter was interested in selling the rights in the Domain Name at issue. The records of these e-mail negotiations are found in Annex E. Thereafter, Bill Summers and the Respondent exchanged e-mails to negotiate the price for the rights in the Domain Name at issue. First, Bill Summers offered the Respondent the sum of $5,000 for the rights. The Respondent, on November 15, 1999, sent an e-mail to Bill Summers indicating that this sum was a "low offer." (Annex E, No. 4: the Respondent replied that "Well, I am going to miss my Swissair flight to Zurich with your low offer."). On November 16, 1999, Bill Summers wrote to the Respondent indicating that $7,500 was the maximum amount that the Complainant was willing to pay. On December 6, 1999, the Respondent wrote to Bill Summers indicating that $1,000,000 was not satisfactory. (Annex E, No. 9: the Respondent wrote that "Let me ask you this way, if you owned the JT.COM domain, would you let it go for a million dollars, I think not.").
(5) In the spring of 2000, Vincent F. Bick of JT International in Geneva wrote to the Respondent asking the latter to discuss the domain name matter. Thereafter, email correspondence took place between Vincent Bick and the Respondent as shown in Annex F.1. The Respondent, on March 1, 2000, wrote to Vincent Bick asking the latter whether he wanted to talk to the Respondent by phone. Then Vincent Bick wrote to the Respondent saying that "We are preparing a legal action to cancel/transfer JT.COM and as a courtesy wanted to give you an opportunity to reconsider your position in the matter." On March 2, 2000, the Respondent wrote to Vincent Bick saying that "You can also show my old article regarding cybersquatting from March 31, 1999, in the article [393] to your staffs who can read Japanese at the following link: http://www.cyberparty.net/domain/log/000400.txt." The "article" referred to in the Respondent's e-mail of March 2, 2000, is a cyber forum, of which the Respondent is a member, to discuss the sale of domain names. The record of this cyber forum (in Japanese) is found in Annex F.2, and an English translation of the most relevant parts of the cyber forum is found in Annex F.3.

5. Parties Contentions
(a) Complainant
The Complainant asserts, as the grounds for its Complaint, as follows:
(1) The Respondent's Domain Name JT.COM is identical to the Complainant's trademark "JT" registered throughout the world and to its widely used corporate logo "JT".
(2) The Complainant is unaware of any legitimate reason the Respondent may have for adopting JT.COM.
(3) The Respondent's two e-mails to Bill Summers in the systems department of JT International in Switzerland, dated November 15, 1999, and December 6, 1999, respectively, clearly indicate the Respondent's bad faith, as set forth in Paragraph 4(b)(i) of the Policy: "circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name." As such, the fact that the Respondent entered into negotiations with the Complainant to sell the JT.COM domain name for a sum in excess of his "out-of-pocket costs" indicates his bad faith.
(4) In accordance with Paragraph 4(b)(i) of the Policy and for the reasons stated above, the Complainant requests the issuance of a decision to effect the transfer of the Domain Name JT.COM to the Complainant.
B. Respondent
The Respondent failed to file a Response to the Complaint.

6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following elements are present:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
The Panel notes that the Respondent has failed to respond to the Complaint within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint. Accordingly, the Panel finds that:
(1) The dominant part of the Domain Name at issue, JT.COM, is identical to the "JT" logo widely used by the Complainant for its Annual Report, Corporate Profile brochure and cigarette packs (Annex C), and to the "JT" trademark for which the Complainant secured registrations for goods in different classes in Japan as well as in numerous other countries (Annex D). Thus, the Complainant's trademark "JT" has become well-known throughout the world as indicating the source of the Complainant's products.
(2) The Respondent adopted the Domain Name JT.COM for no legitimate reason but for the purpose of selling it to another person for unjustifiable profit (Annex E). The Respondent has no rights or legitimate interests in respect of the Domain Name and it has been registered and used by the Respondent in bad faith.
(3) If the Respondent is allowed to maintain the registration of the Domain Name or to use it for any purpose, the consuming public throughout the world will be mislead as to believe that the Respondent has some business relationship or connection with the Complainant, and, moreover, the distinctive power of the Complainant's well-known trademark and company logo "JT" will be diluted.

7. Decision
Based on the above findings, the Panel hereby decides, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, that the registration of the Domain Name at issue, JT.COM, shall be transferred to the Complainant.

Domain Name Transferred