ADMINISTRATIVE PANEL DECISION
Casio Keisanki Kabushki Kaisha, dba Casio Computer Co., Ltd v. Fulviu Mihai Fodoreanu
Case No. DRO2003-0002
1. The Parties
The Complainant is Casio Keisanki Kabushki Kaisha, dba Casio Computer Co., Ltd, a corporation with its principal place of business in Tokyo, Japan.
The Respondent is Fulviu Mihai Fodoreanu, of Canoga Park, California, United States of America.
2. The Domain Name and Registrar
The domain name which is the subject of this dispute is: <casio.ro>.
The Registrar with which the domain name is registered is Register.com.
3. Procedural History
The Complainant initiated the proceeding by filing a Complaint, which was received by the WIPO Arbitration and Mediation Center ("the Center") by email on April 24, 2003, and in hardcopy on May 8, 2003. The Complainant elected to have the dispute decided by a three-member Administrative Panel.
On April 25, 2003, the Registrar verified that the domain name was registered with it, that the Respondent is the current registrant of the domain name, the Respondent's contact details and that the Uniform Name Dispute Resolution Policy ("the Policy") applies to the domain name.
The Center verified that the Complaint satisfied the formal requirements of 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 of the Center ("the Supplemental Rules").
On May 9, 2003, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier (with enclosures) and email (without attachments). The Center advised that a Response was due by May 29, 2003. The Center granted an extension to June 7, 2003.
A Response was received from the Respondent by the Center, by email on June 7, 2003, and in hardcopy on June 16, 2003.
Having received a Statement of Acceptance and Declaration of Impartiality from the Panelists, the Center transmitted to the parties on June 30, 2003, a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision Date was July 14, 2003. An extension in accordance with Paragraph 10(c) of the Rules to July 23, 2003, was granted.
The Complainant sought leave to file a reply to the response. The Panelists exercised their discretion against admission of a reply.
The Panelists' decision is based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant's business was founded as "Kashio Seisansho" in Japan in 1946. The founder's surname was "Kashio". The company name "Casio Computer Co., Ltd" was established in 1957. The Complainant operates a world-wide business, primarily in digital imaging products, wrist technology products such as watches and mobile phones, personal digital assistants, electronic musical instruments, calculators and other consumer electronic products. It employs around 18,000 people, and has over 30,000 shareholders, and has subsidiaries and related companies around the world which use the name "Casio" in their trade names. For the fiscal year ended March 31, 2001, the net sales for the company and its subsidiaries exceeded US$3,580,000,000 and total assets exceeded US$3,595,000,000. A "Chronology of Major Products" of the Complainant was provided as Annex C to the Complaint.
The "CASIO" trademark is registered in a number of countries including the United States (Annex E), Romania (Annex F) and Japan (Annex G). Various trademarks were registered or applied for prior to the adoption by the respondent of the domain name in issue.
The Complainant uses <casio.com>, <casio.co.jp> and <world.casio.com> and other "casio" domain names as addresses for websites which promote its businesses. These websites can be accessed by the public throughout the world. Copies of the Complainant's home pages were provided as Annex H to the Complaint. The domain names were registered prior to the date of registration of the domain name in issue.
The Complainant has been selling "CASIO" brand products in Romania on a regular basis for over 10 years ago. Since August 2000, its sales in Romania have been made through an agent. The Complainant's product catalogue for the Romanian market was provided as Annex I to the Complaint. The Complainant estimated the sales of its products in Romania exceeded 3.5m Euros in 2000, 2.8m Euros in 2001, and 4m Euros in 2002.
5. Parties' Contentions
The Complainant contends that the registration agreement pursuant to which the domain name is registered incorporates the Policy. A copy of the Policy (but not the registration agreement) was provided as Annex B to the Complaint.
The Complainant contends that the domain name <casio.ro> is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant notes that the Respondent registered the domain name <casio.ro> on May 14, 2001, which was after the first use of the trademark and tradename "CASIO" by the Complainant, the dates of registration of "CASIO" as or as part of a trademark and the Complainant's first use of the domain names <casio.com>, <casio.co.jp> and <world.casio.com>.
The Complainant contends that the Respondent had no pre-existing rights or legitimate interest in the word "CASIO" and deliberately adopted a business name by creation of an acronym which coincidently is identical to the Complainant's trademark. The complainant contends that this will cause world-wide confusion among persons who visit the Respondent's website with the expectation that it is run or sponsored by the Complainant. The Complainant notes that the Respondent owns no US or Romanian trademark or service mark registrations for "CASIO" or any similar term.
The Complainant states that the "CASIO" trademark is a coined word with no descriptive significance and is not being used in a descriptive manner by the Respondent. It also contends that it has no meaning in the Romanian language and is not the personal name of the Respondent. The Complainant notes that the Respondent has never had any business dealing with the Complainant and is not selling the goods of the Complainant or operating a website which comments on the business of the Complainant. The Complainant contends that the Respondent deliberately created an acronym from the words "Colegi? Amici? Singuri? Intalniri Online?" which translate from Romanian to English as "Colleagues? Friends? Alone? Online Dates?". Various words appear at the top of the home page for <casio.ro> or the linked page <prietenii.com>, where the Respondent conducts a business with the additional name <prietenii.com>. The business being conducted through the <casio.ro> website involves "personal ads" and an "Adults Section" linked to the website <nud.ro>. The Respondent also solicits "banner ads" for commercial placement on all pages of his website. See Annex K to the Complaint.
Lastly, the Complainant contends that the domain name was registered and is being used in bad faith. The Complainant contends that the Respondent should be considered to have constructive notice of the Complainant's trademark registrations. Further, the Complainant contends that it is highly unlikely that the Respondent has no actual knowledge of the Complainant's trademark and tradename in view of the Complainant's global use and promotion of the trademark and tradename. The Complainant contended that while the Respondent may have a right to operate an explicit hardcore sex site under a generic-type name he does not have the right to do so drawing on the Complainant's trademark to draw traffic to such sites or to sell third-party banner advertising which will have wide exposure to persons who access the site out of a mistaken belief that it is associated with the Complainant or the Complainant's business. The Complainant also notes that the Respondent's use of the word "CASIO" in the disputed domain name will prevent the Complainant from reflecting its trademark in the ".ro" domain.
The Respondent does not contest jurisdiction.
The Respondent contends that CASIO is a meaningless word in Romanian and with no direct translation from English or Japanese and that the acronym "C.A.S.I.O." can easily be an acronym for the words in Romanian, Colegi, Amici, Singuri, Intalniri, Online which translated into English mean "Colleagues, Friends, Alone, Online Dates". The Respondent notes that the Complainant did not protect its mark by purchasing the domain name <casio.ro>. The Respondent further states that he purchased the name in late 2001when "no one was interested in the name". The Respondent contends there is no risk of confusion because of the divergence between the goods sold by the Complainant and the services offered by the Respondent and between their respective trade channels.
The Respondent notes that they are currently running a portal, email services, virtual cards and personal ads website under <casio.ro>. The Respondent states that the name <casio.ro> was not created artificially but was formed to encompass a multitude of meanings as an acronym. The Respondent contends that it has a legitimate interest in the domain name by virtue of the use of the name in connection with a different business area. The Respondent states that it was not attempting to attract consumers interested in electronics or watches.
Lastly, the Respondent contends that the domain name has not been registered and is not being used in bad faith. It notes that it did not try to sell the domain name to the Complainant and has no intention of preventing the Complainant from using the domain name. The Respondent claims that it has no purpose of disrupting the Complainant's business since it is in a different business. As the Complainant filed the complaint at a time when it knew that the domain name was being used in connection with an active website, it contends that this is a case of reverse domain name hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to make out three elements.
A. The "domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights".
The domain name in issue is confusingly similar to a trademark or service mark in which the Complainant has rights. We find that the domain name <casio.ro> is identical or confusingly similar to the Complainant's pre-existing trademark, trade name and domain names.
B. The Respondent "has no rights or legitimate interests in respect of the domain name".
If the Panelists find any of the matters set out in Paragraph 4(c) of the Policy to be proved, based on the evaluation of all the evidence, that is said to demonstrate the Respondent's rights or legitimate interests to the domain name.
There is no evidence, before any notice to the Respondent of the dispute, of use of the domain names, or names corresponding to the domain name in connection with a bona fide offering of services in terms of Paragraph 4(c)(i) of the Policy.
There is no evidence that the Respondent has been commonly known by the domain name, even though it acquired no trademark or service mark rights, in terms of Paragraph 4(c)(ii) of the Policy.
Lastly, there is no evidence that the Respondent is making a legitimate non-commercial use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark in issue in terms of Paragraph 4(c)(iii) of the Policy. The domain name has been used for a commercial site.
There is no other evidence suggesting that the Respondent has rights or legitimate interests in respect of the domain names save for the contention that the domain name is an acronym for "Colleagues, Friends, Alone, Online Dates" in Romanian. We regard this suggestion sceptically, particularly when viewed against the extensive evidence as to the use that has been made by the Complainant both internationally and within Romania of the term "casio", which is a word with no independent meaning as a matter of ordinary usage. We conclude that on the balance of probabilities the domain name was not independently chosen.
C. The "domain name has been registered and is being used in bad faith".
There must be evidence of both registration and use in bad faith.
If the Panelists find evidence of any of the non-exhaustive matters set out in Paragraph 4(b) of the Policy, that shall be evidence of registration and use of the domain names in bad faith.
The matters set out in paragraph 4(b) are as follows:
(i) Circumstances indicating that the Respondent has registered or has acquired the domain names for the purpose of selling, renting or otherwise transferring the domain name registration of the Complainant who is the owner of the trademark or to a competitor of that Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. There is no evidence of this ground.
(ii) The Respondent has registered the domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. The Respondent's conduct has prevented the Complainant from reflecting its "CASIO" trademark in the "ro." domain name. The Respondent, however, contends that it has not registered the domain name for this reason.
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. There is no evidence that the Respondent and the Complainant are competitors.
(iv) By using the domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's Web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's Web site or location, or of a product or service of the Respondent's Web site or location. On balance this is likely. The Complainant's trademark is well known. The Respondent has no connection with the Complainant. The Respondent's explanation for the derivation of its domain name is unlikely. It seems more likely that a well-known mark has been used to attract customers to the Respondent's site for commercial gain. The Complainant has made out the burden of showing that the domain name has been registered and is being used in bad faith.
The Panelists find that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith in accordance with Paragraph 4(a) of the Policy. In accordance with that finding, the Panelists order that the domain name be transferred to the Complainant.
Jeffrey M. Samuels
Nick J. Gardner
Dated: July 22, 2003