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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wacoal Corporation and Wacoal America Inc. v. Orion Foundry (Canada) ulc

Case No. D2007-1540

1. The Parties

The Complainants are Wacoal Corporation, Kyoto, Japan, and Wacoal America Inc., New York, United States of America, represented by Morrison & Foerster LLP, United States of America.

The Respondent is Orion Foundry (Canada) ulc, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <wacoaldirectory.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2007. On October 19, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On October 31, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2007 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaintant filed an amended Complaint on November 6, 2007. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2007.

The Center appointed Michael C. Pryles as the sole panelist in this matter on December 10, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainants are companies registered in Japan and the United States of America. Wacoal America, Inc. is a wholly-owned subsidiary of Wacoal International Corporation, which is in turn wholly-owned by Wacoal Corporation. The Complainants are engaged in the design, manufacture and distribution of intimate apparel.

The Complainants hold a number of trademark registrations in the United States of America and Europe for WACOAL and other marks containing this mark. These include United States Registrations 1,245,293, 1,839,485 and 2,860,779, and Community Trade Mark Registrations 000804484 and 000863936. The Complainants also own the domain name <wacoal-america.com> which they registered in 1996 and on which they have operated a website since at least March 2000.

The Respondent registered the domain name in dispute <wacoaldirectory.com> on January 20, 2006.

5. Parties’ Contentions

A. Complainant

The Complainants make the following contentions:

- Their WACOAL trademark is a famous mark known throughout the world.

- The disputed domain name incorporates the Complainants’ well-known WACOAL trademark in its entirety and is therefore identical or confusingly similar to the Complainants’ trademark (citing Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746 (August 17, 2006) and F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005 (March 14, 2006)).

- The addition of the generic word “directory” does not diminish the likelihood of confusion (citing America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661 (July 10, 2001)).

- The suffix “.com” is inconsequential and should be disregarded when determining whether or not a domain name is confusingly similar to a complainant’s trademark (citing Rolls-Royce Motor Cars Limited v. Lazarus Essulat, WIPO Case No. D2005-1161 (January 12, 2006) and News Holding Limited v. Steve Kerry / WWW Enterprise, Inc., WIPO Case No. D2006-1374 (January 24, 2006)).

- The Respondent has no rights or legitimate interests in the disputed domain name as it is inconceivable that it registered it without prior knowledge of the Complainants, their trademarks or products. This suggests that the Respondent intended to profit commercially from the disputed domain name by creating consumer confusion and misleadingly diverting customers. Further, the Complainants notified the Respondent that the disputed domain name was confusingly similar to the Complainants’ trademarks and the Respondent failed to respond. This suggests that the Respondent was aware that it had no rights or legitimate interests in the disputed domain name and that it had registered it and was using it in bad faith (citing America Online, Inc., v. Viper, WIPO Case No. D2000-1198 (November 28, 2000)).

- The Complainants have not authorized or licensed the Respondent to use the Complainants’ trademarks.

- The disputed domain name was registered and has been used in bad faith by the Respondent.

- This is evidenced by the fact that by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location (citing Policy, paragraph 4(b)(iv)).

- The Respondent’s use of the disputed domain name to redirect consumers to websites offering adult-oriented pornographic goods and services also has a disruptive effect on the Complainants’ business (citing Napster, Inc. v. John Gary, WIPO Case No. D2005-0913 (October 11, 2005)). This also tarnishes the Complainants’ marks and is strong evidence of bad faith (citing Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Pearson Network S.A., WIPO Case No. D2006-1271 (November 27, 2006) and Lee Memorial Health System v. Oleg Zaizef, WIPO Case No. D2005-1305 (February 9, 2006)).

- The disputed domain name incorporates the Complainants’ famous coined WACOAL trademark in its entirety, which alone constitutes strong evidence of bad faith intent (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000); America Online, Inc. v. Chinese ICQ Network, WIPO Case No. D2000-0808 (August 31, 2000); and The Caravan Club v. Mrgsale, NAF Claim No. 95314 (August 30, 2000)).

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In order to succeed in its Complaint the Complainant must prove each element within paragraph 4(a) of the Policy. These are as follows:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainants have established rights in a number of trademark registrations in which the word “wacoal” is the dominant particular. The disputed domain name incorporates the Complainants’ WACOAL trademark together with the generic word “directory”. The inclusion of a generic term does not defeat the similarity created by use of a complainant’s mark (America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661 (July 10, 2001)).

Also it is well established that the addition of the domain identifier (“.com” in this case) does not serve to distinguish a domain name from the trademark of a complainant (News Holding Limited v. Steve Kerry /WWW Enterprise, Inc., WIPO Case No. D2006-1374 (January 24, 2006); Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (July 10, 2001)).

Therefore the Panel finds that the disputed domain name is confusingly similar to trademarks which the Complainants have rights.

B. Rights or Legitimate Interests

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that, with respect to paragraph 4(a)(ii), “[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. In support of this proposition it refers to Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 (August 21, 2003) and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (April 14, 2004).

The Panel accepts the Complainants’ assertion that they have not authorized or licensed the Respondent to use their trademarks.

The Respondent is using the disputed domain name in connection with a website containing links to pornographic adult-oriented websites. This, and the fact that the disputed domain name incorporates the Complainants’ well-known WACOAL trademark strongly suggests that the Respondent is seeking to mislead consumers and trade off the goodwill of the Complainants’ marks. Such use of a domain name does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy (Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (July 29, 2005)).

Further, nothing in the Respondent’s website indicates that it is known as an individual, business or organization under the disputed domain name.

In the Panel’s view, these facts are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Therefore the Panel finds that the Complainants have met their initial burden of proof. As the Respondent has failed to submit a response, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 (August 21, 2003)).

Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 2 of the Policy provides that when someone applies to register a domain name, he or she represents and warrants to the registrar that to his or her knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.

The Panel is of the view that the Respondent must have been aware of the Complainants’ trademark rights at the time of registration of the disputed domain name. This is because the Complainants’ trademarks are well known and the word WACOAL is a coined expression. The only plausible explanation for the Respondent’s use of the word “wacoal” is that it had knowledge of the Complainants’ trademarks.

In the Panel’s view, the fact that the Respondent registered the disputed domain name in breach of its representation and warranty that such registration would not infringe a third party’s rights constitutes registration in bad faith.

The Panel finds that the disputed domain name was registered in bad faith.

Paragraph 4(b) of the Policy provides that:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

[…]

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Respondent’s use of a domain name that incorporates the Complainants’ well-known WACOAL trademark indicates an intention to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

This is evidenced by the fact that the Complainants manufacture intimate apparel. The Respondent’s website contains links to pornographic websites and other websites which sell lingerie. Because of the nature of the Complainants’ products and the websites linked to by the Respondent, the Panel concludes that the Respondent deliberately registered and used a domain name containing the word “wacoal” in order to trade off the Complainants’ trademarks.

The Panel concludes that the use of the word “wacoal” is no mere coincidence but is calculated to trade off the trademarks of the Complainants which are associated with intimate garments.

This reinforces the conclusion that the website was created with the intention of attracting Internet users by creating a likelihood of confusion with Complainants’ trademarks.

As to the requirement of attempting to attract users for commercial gain, the Complainants have not provided direct evidence that the Respondent received compensation in connection with the disputed domain name. However the Complainants submitted a print-out of the webpage at the disputed domain name. The webpage describes the links it provides as “Sponsored Results”. The Panel construes this to mean that the Respondent receives compensation for the listings and links that it includes in its search results and/or for hits on the sites that the Respondent refers Internet users to (Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911 (January 19, 2005)).

The Panel finds that the above circumstances satisfy paragraph 4(b)(iv) of the Policy and thus constitute evidence of registration and use in bad faith.

Further, it has been held in a number of cases that “the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith” (Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (March 4, 2003)). In the Panel’s view, the fact that the diversion is to an intermediate website which contains links to a pornographic site does not alter this conclusion.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wacoaldirectory.com> be transferred to the Complainants.

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Michael C. Pryles
Sole Panelist

Dated: December 24, 2007