Domain name -- Domain name dispute resolution policy -- U.S. Trademark -- U.S. Service mark -- Identical -- Bad faith registration -- Inactivity of domain name -- Non-use of domain name -- False identity registration of domain name - Inactivity and non-use of name. 

Complainant was owner of U.S. trademark and service mark registrations for the mark POCHACCO.  Complainant used the POCHACCO mark in connection with a wide range of products and services since 1989 and spent millions of dollars in the U.S. on promotion of cartoon characters including POCHACCO.  The complainant was unable to register the domain name POCHACCO.COM as the Respondent had already registered it.  The Respondent registered the name in 1997 and renewed it in 1999 but had not made any commercial use of it. 

Held, Name Transferred to Complainant. 

Although Respondent agreed to relinquish its right to the domain name, even absent this agreement, the Complainants established requirements of Paragraph 4(a) of the Policy that: the domain name POCHACCO.COM is identical to Complainants’ registered mark POCHACCO; Respondent has no rights or legitimate interests in the domain name; and the domain name was registered and is being used in bad faith. “Bad faith” includes inactivity or non-use of domain name and can also include registering domain name under false identity. 

Policies referred to

Uniform Policy for Domain Name Dispute Resolution, adopted August 26, 1999
Rules for Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999
WIPO Supplemental Rules of Uniform Domain Name Dispute Resolution Policy

Cases referred to

Telstra, Case No. D2000-0003
Mondich v. Brown, Case No. D2000-0004
 

Samuels, Panelist:  -

On March 14, 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 response was filed on April 7, 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. trademark and service mark registrations (Nos. 1,985,358, 2,000,913, and 2,236,507) for the mark POCHACCO. Since as early as August 1989, Complainants have used the POCHACCO mark on or in connection with a wide range of products and services, including a retail store featuring stationery, greeting cards, jewelry, playing cards, and other assorted merchandise. 

Complainants’ business centers around the merchandising of various signature cartoon characters which Complainants first created and began developing over twenty-five (25) years ago. POCHACCO is one such character. POCHACCO is described in Complainants’ advertising as "a chubby little dog with a sense of fun as big as the great outdoors."

Complainants spend over one million dollars a year in the U.S. promoting its characters, including POCHACCO. On average, each month, Complainants sell in the U.S. over six million dollars in merchandise featuring their signature characters. Additionally, over the past decade, Complainants have spent over 100 million dollars worldwide for advertising and sales promotion of their signature characters.

Complainants also have opened about forty (40) corporate theme stores in the U.S. that feature their signature characters, including POCHACCO. Complainants also sell their goods over the Internet under domain names that include the names of their signature characters, such as HELLOKITTY.COM and SPOTTIEDOTTIE.COM.

Complainants, however, were unable to register the domain name POCHACCO.COM, as 
that domain name was registered in the name of Respondent DLI on May 6, 1997.  The registration was renewed on May 3, 1999. In its "Responses to Complainants’ Allegations," Respondent conceded that it has not made any commercial use of the domain name, although it alleged that the domain name is used to receive e-mail.

Decision 

In its response, Respondent agreed to relinquish its right to the domain name POCHACCO.COM. In view thereof, it is ordered that the domain name POCHACCO.COM 
be transferred from Respondent to Complainant Sanrio, Inc. 

Even absent Respondent’s agreement to relinquish its domain name, it is clear that Complainants 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 POCHACCO.COM is legally identical to Complainants’ registered mark POCHACCO; Respondent has no rights or legitimate interests in the domain name; and the domain name was registered and is being used in bad faith.

With respect to the issue of "bad faith," it has been held that inactivity or non-use of a domain name by a Respondent amounts to the domain name being used in "bad faith." See Telstra, Case No D2000-0003; Mondich v. Brown, Case No. D2000-0004 ("possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use’). Further evidence of Respondent’s "bad faith" may be found in the fact that while Respondent registered its domain name under the name DLI, of Palo Alto, California, according to the records of the California Secretary of State, no such entity exists. 
  Jeffrey M. Samuels
Panelist
Dated: April 20, 2000