Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau

[Indexed as: Sanrio Ltd. v. Lau]

WIPO Arbitration and Mediation Center 
Administrative Panel Decision

Case No. D2000-0172
Judgment: 20 April, 2000.

Domain name – U.S. Service mark – U.S. Trademark – Identical – Distinctive mark – No authorized association – Bad faith registration – No website established - Distinctive marks - Unauthorized association.

Complainants owned a U.S. service mark SANRIO SUPRISES and the domain name SANRIO-SURPRISES.COM. The Respondent had registered SANRIOSURPRISES.COM, and had previously registered other domain names using others of the Complainants’ marks, though these other domain names had since lapsed.  Respondent did not respond to the complaint.
Held, Name Transferred to Complainant.

The registered domain is identical to the Complainants’ mark.  The fact that there is no space in the domain name while there is on in the Complainants’ mark is not legally significant, since spaces in domain names are technologically impossible.  The Respondent cannot have chosen to register the name unless it was seeking to create an impression of an association with the Complainants.  Since there was no authorized association, the domain name cannot be said to be legitimate.  Furthermore, the Respondent has never been commonly known by the mark or the domain name.

Given the distinctiveness of the Complainants’ marks and the amount of advertising and promotion associated with the marks, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name.  Bad faith registration is further demonstrated by the facts that the Respondent: never established a web presence using the domain name; had previously registered domain names using the names of the Complainants’ primary retail locations; did not respond to the Complainants’ correspondence to assert a legitimate interest; and renewed the registration after being apprised by the Complainants of their rights in the mark.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.
WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. 

Panel Decisions referred to

Telstra Corp. v. Nuclear Marshmallows, D-2000-0003 (February 18, 2000).

Bender, Panelist -

On March 17, 2000, the WIPO Arbitration and Mediation Center received a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. A "Notification of Respondent Default" was sent by WIPO to Respondent on April 10, 2000.

The Complainants are Sanrio Company, Ltd., a corporation organized and existing under the laws of Japan, and its wholly owned subsidiary Sanrio, Inc.

Sanrio Company, Ltd. owns U.S. Registration No. 1,676,277 for the service mark SANRIO SURPRISES for "retail store services in the field of clothing, stationery, toiletries and gifts." This mark has been used by Complainants since sometime in 1988. Complainants also own the domain name SANRIO-SURPRISES.COM.

Complainant Sanrio Company Ltd. also owns U.S. Registration 1,289,682 for the mark SANRIO and DESIGN, as used, since as early as 1976, on a wide variety of goods, including perfume, pocket calculators, umbrellas, mirrors, towels, and sneakers. Sanrio Company Ltd. also currently owns some twenty-eight (28) other marks for which applications to register are pending before the U.S. Patent and Trademark Office. 

Complainants’ business centers around the merchandising of various signature cartoon characters which Complainants first created and began developing over twenty-five (25) years ago. Complainants make and sell hundreds of products for children and young adults featuring their signature characters. The products are sold throughout Asia, Europe, and North America. All of these products include Complainants’ house mark SANRIO.

Complainants’ SANRIO products are sold via catalogs, the Internet, authorized dealers and retail outlets, corporate theme stores and licensed Sanrio boutiques. Among these stores are those affiliated with Complainants that do business under the SANRIO SURPRISES mark. SANRIO branded signature products also are sold at Complainants’ SANRIO GIFT GATE stores.

On average, Complainants sell over six million dollars in merchandise under the SANRIO house mark each month in the U.S. Additionally, over the past decade, Complainants have spent over 100 million dollars worldwide for advertising and sales promotion of their SANRIO signature characters.

Respondent registered the domain name SANRIOSURPRISES.COM on November 4, 1997; the registration has been renewed. The evidence (see Exhibit J) also indicates that Respondent, at one time , owned domain name registrations for SANRIO-SURPRISES.COM, SANRIOGIFTGATE.COM, and SANRIO-GIFT-GATE.COM. Respondent, however, has never conducted any business under the SANRIOSURPRISES.COM domain name, or under any of the other domain names formerly owned by Respondent.

On November 17, 1998, Complainants’ counsel wrote to Respondent protesting Respondents’ domain name registrations. (See Exhibit L). The record indicates that Respondent did not respond to such communication. Eventually, the SANRIOSURPRISES.COM domain name was put "on hold" pursuant to Network Solutions Inc.’s then-applicable dispute resolution policy. 


Based on my review of the entire record, it is ordered that the domain name SANRIOSURPRISES.COM be transferred from Respondent to Complainant Sanrio, Inc.

It is clear that Complainants have established the requirements of Paragraph 4(a) of the Policy and that Respondent has not shown any legitimate interests under Paragraph 4(c) of the Policy.

The domain name SANRIOSURPRISES.COM is legally identical to Complainants’ registered mark SANRIO SURPRISES. The fact that Respondent’s domain name does not have a space between the terms "SANRIO" and "SURPRISES" is not legally significant since spaces are not technologically permissible in domain names. 

The record also demonstrates that Respondent has no rights or legitimate interests in the SANRIOSURPRISES.COM domain name. Since the SANRIO SURPRISES mark is unique to Complainants and Complainants have never authorized or licensed its use by Respondent, Respondent cannot be said to have legitimately chosen the SANRIOSURPRISES.COM domain name unless it was seeking to create an impression of an association with Complainants. Since there is no such authorized association, Respondent’s interests in the domain name cannot be said to be legitimate. Telstra Corp. v. Nuclear Marshmallows, D-2000-0003 (February 18, 2000).

Respondent has not established any legitimate interests under paragraph 4(c) of the Policy. The evidences indicates that no Web site has been actively available under the disputed domain name, that Respondent, apparently, has not offered any goods or services under the SANRIOSURPRISES.COM domain name, and is not making any legitimate noncommercial use of the domain name for any purposes. Further, there is nothing in the record to suggest that Respondent has ever been commonly known by the mark or domain name. 

The evidence also makes a compelling case for the proposition that Respondent registered and used the SANRIOSURPRISES.COM domain name in bad faith. Given the distinctiveness of Complainants’ SANRIO and SANRIO SURPRISES marks and the amount of advertising and promotion associated with such marks, it is "not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name." See Telstra, Case D2000-0003. These facts also support a determination that the domain name was registered in bad faith.

Under paragraph 4(b)(ii) of the Policy, bad faith registration and use of a domain name may be found where Respondent has registered the domain name in order to prevent the "legitimate" trademark owner from using the mark as its domain name and Respondent has engaged in a pattern of such conduct. That is the situation here.

As noted above, Respondent, at one time, owned registrations for the following domain names: SANRIOSURPRISES.COM, SANRIO-SURPRISES.COM, SANRIOGIFTGATE.COM, and SANRIO-GIFT-GATE.COM. Respondent’s registration of domain names reflecting the marks used in connection with Complainants’ primary retail locations, in iterations where the spacing between the words in the marks are both deleted and replaced with hyphens, evidences a clear intent to prevent Complainants from registering these marks as domain names and a clear pattern of improper conduct.

With respect to bad faith use, it is clear that the so-called "passive" holding of a domain name, that is, the registration of a domain name alone, can support such a determination. See paragraph 4(b) of Policy. The facts in this case support a determination that Respondent’s passive holding of the domain name was a bad faith use. As noted above, Respondent, apparently, has never maintained a Web presence for the SANRIOSURPRISES.COM domain name and has never made any legitimate use of the domain name.

Further evidence of bad faith use may be based on following uncontroverted facts:

1. Respondent never replied to Complainants’ correspondence to assert any legitimate interest in, or right to use, the domain name.

2. Respondent renewed the registration for the SANRIOSURPRISES.COM domain name after being apprised by Complainants of their rights in the SANRIO and SANRIO SURPRISES marks, thereby precluding Complainants from registering their registered SANRIO SURPRISES mark as a domain name.

Domain Name Transferred