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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zumba Fitness LLC v. Kensuke Kishi, Sun up Corp

Case No. D2008-1181

1. The Parties

The Complainant is Zumba Fitness LLC of Hollywood, Florida, United States of America, represented by John Berryhill PhD. Esq., United States of America.

The Respondent is Kensuke Kishi, Sun Up Corp of Hyogo, Japan.

2. The Domain Name and Registrar

The disputed domain name <zumbajapan.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2008. On August 4, 2008, the Center transmitted by email to GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com a request for registrar verification in connection with the disputed domain name. On August 5, 2008, GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 August 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2008.

The Center appointed Douglas Clark as the sole panelist in this matter on September 26, 2008. 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.

The Complaint was filed in English together with a request that English be the language of the proceedings. The registration agreement concerning the disputed domain name is in Japanese. On August 6, 2008, the Center notified the Parties by email in English and Japanese that the Complainant and the Respondent would both be given an opportunity to submit comments on the Complainant’s language request, the Complainant being granted five days from the date of notification and the Respondent seven days. Among other things, the Respondent was requested to submit any objections and any supporting materials as to why the proceedings should not be conducted in English, otherwise the proceedings would go forward on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. On August 6, 2008, the Complainant submitted a confirmation that the Complaint enumerated facts and arguments as to why the proceeding should be in English and acknowledged that the language of the proceeding is committed to the discretion of the panel to be appointed. The Respondent did not file any submission or objection within the due date of August 13, 2008. On August 21, 2008, the Center notified the Parties by email and by fax in English and Japanese as follows:

“Given the provided submissions and circumstances of this case, the Center has decided to:

1) accept the Complaint as filed in English;

2) accept a Response filed in either English or Japanese;

3) appoint a Panel familiar with both languages mentioned above, if available.”

The Center also notified the Parties that the discretion to decide the language of the proceedings lay with the Panel to be appointed. The Panel’s decision on the appropriate language is set out in the Discussion and Findings section below.

4. Factual Background

The Complainant is the successor in interest to an organization founded in 1999 commercializing in fitness program and related audiovisual products. The Complainant operates its main website at “www.zumba.com” to do the said business online. The Complainant has developed affiliate relationships with many top national fitness facility chains and organizations. The Complainant owns several United States of America (“US”, “United States”, or “America”) trademark registrations as well as Japanese trademark registrations composing of the mark ZUMBA.

The Respondent is the registrant of the disputed domain name <zumbajapan.com>. The domain name resolves to a website predominately in Japanese offering videos and apparel related to the Complainant’s Latin dance fitness programs.

5. Parties’ Contentions

A. Complainant

The Complainant’s main contentions are summarized below:

a) Identical or Confusingly Similar

The disputed domain name <zambajapan.com> wholly consists of the Complainant’s mark ZUMBA, and adds the geographic indicator “Japan”. The addition of “Japan” does not render the domain name not to be confusingly similar, and indeed the domain name suggests that the corresponding website originates from or is authorized by the Complainant for use in the Japanese market. The domain name was registered after the Complainant registered its trademark in Japan.

b) Rights or Legitimate Interests

The Respondent is not licensed or authorized to use the Complainant’s marks, nor to purport to offer instruction or related audiovisual materials in the Complainant’s proprietary ZUMBA fitness program. The Respondent’s website prominently displays the Complainant’s text marks, logo and adopts the same color scheme as that of the Complainant’s. The Respondent’s website embeds video presentation produced by the Complainant and distributed via YouTube, and offers the Complainant’s products as well as competing products. Hence, the Respondent’s use of the domain name undertaken after the Complainant’s registration of ZUMBA in Japan can not be considered as a legitimate use under the Policy.

c) Registered and Used in Bad Faith

As set forth above in the rights and legitimate interests section, the Respondent’s use of the domain name is clearly designed to convey the impression that the Respondent is authorized by the Complainant. Furthermore, the Respondent’s use of the domain name has been raised by a prospective licensee of the Complainant in Japan to question the value of rights which the Complainant has been seeking to license in Japan. Accordingly, the Respondent’s registration and use of the domain name has disrupted the Complainant’s business and is a clear attempt to attract Internet users to its website by creating a likelihood of confusion in accordance with paragraph 4(b) of the Policy. Therefore, the domain name comprising the inherently distinctive ZUMBA mark which resolves to a website providing goods and services directly competitive with those of the Complainant cannot be considered to have been registered or used in good faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceedings

The domain name registration agreement being in Japanese, pursuant to Rules, paragraph 11, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement, i.e., the default language of the proceedings is Japanese. However, the Complainant submitted arguments along with the Complaint as to why the proceedings should proceed in English.

The Complainant’s arguments on the language of proceedings are set out in full below:

“(i) the mark at issue in this Proceeding is a fanciful, inherently distinctive mark having no significance other than as an identifier of goods and services originating with and licensed by the Complainant. Accordingly, the Respondent is well aware that it has misappropriated the goodwill of the Complainant, a US entity.

(ii) in addition to the Domain Name, the Respondent has appropriated copyrighted materials of the Complainant, is engaged in sale of the Complainant’s products without authorization, and has duplicated visual aspects of the Complainant’s own website. Again the activities of the Respondent leave no doubt that it is engaged in illicit misappropriation of the intellectual property of a US entity.

(iii) the home page of the registrar, Discount-Domain.com, is in English, as is the site to which the registrar’s home page forwards (Exhibit B). The registrar is further self-identified as conducting business in English and in its listing in the Internic/ICANN directory of accredited registrars (also in Exhibit B).

(iv) In connection with the same registrar, the appropriate language has been determined to be English in Sodexho Alliance v Stephane Pacaud WIPO Case No. 2007-0910.

Similar circumstances have been relied upon in the past for proceeding in a language which the parties have demonstrated competence and substantive connection. (See, e.g. Monografias.com S.A., Fernando Julian Negro v. Nick Lozikov / Moniker Privacy Services, WIPO Case No. D2008-0140.)”

The Panel considered the arguments made by the Complainant and was not satisfied that sufficient reasons has been given that the proceedings should be in English rather than the language of the registration agreement.

In the Panel’s view, the last two arguments (c) and (d) are irrelevant because they relate to the language of the Registrar and not the Respondent. With relation to (a) and (b) even if found to be true, the fact that the goodwill and intellectual property of a US entity has been misappropriated is not enough to justify overriding the requirement of Rule 11. The panel also notes that (a) is not strictly correct. On some of the Complainant’s United States Trademark Registration certificates the notation has been added “The foreign wording in the mark [i.e., Zumba] translates into English as Fast”.

As to the cases, cited by the Complainant, in the first decision (Sodexho Alliance v Stephane Pacaud, WIPO Case No. D2007-0910) the complainant proved that the respondent in Philippines had the capability to communicate in English. In the second cited decision (Monografias.com S.A., Fernando Julian Negro v. Nick Lozikov / Moniker Privacy Services, WIPO Case No. D2008-0140) the respondent’s primary languages were English and Russian. The respondent ran the disputed website in Spanish which was the primary language of the complainant. Moreover, the respondent replied to the complaint in English and Spanish. The respondents in each of these cases had been proved to have capability to present their cases in the language of the complaint and would not suffer any prejudice.

With regard to the Respondent, there are specific aspects of the case that favoured requiring the Complaint to be translated. These are:

1) the address and contact details given for the Respondent appear to be legitimate (and there is no suggestion by the Complainant they are not);

2) the webpage “www.zumbajapan.com” links to pages where seemingly legitimate contact details are provided; and

This does not appear to be, therefore, a case where the Respondent is a fly by night operator or serial hijacker of trademarks (nor is this alleged).

The panel was also concerned also that to allow the Complaint to proceed in a language other than the registration agreement when no satisfactory reason by the Complainant to do so has been shown will encourage complainants to file proceedings in their own language in the hope of a default so that the proceedings can proceed in that language. In this Panel’s view, this goes against the general principle in Rule 11.

The panel also notes that in many cases, upon being informed that the language of the registration agreement is another language, complainants have filed a translation. (See for example Toyota Motor Credit Corporation v. Kilsoo Jung, WIPO Case No. D2008-0731)

On the other hand, the Respondent had failed to file any response either to the Complaint or to a specific invitation (made in both English and Japanese) to object the Complainant’s language request. In this Panel’s view a respondent’s failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint. See for example, this Panel’s decision in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191.

Taking all these factors into account, the Panel determined that it would be appropriate to allow both parties an opportunity to provide further submissions as to the language of proceedings and issued the following Procedural Order in Japanese and English:

“The Complaint in this matter was submitted in the English language including a request that the proceeding be conducted in English. The applicable registration agreement is in Japanese. The Respondent has not responded to the proceedings nor to notices from the Center (sent in Japanese) which dealt, inter alia, with the language of the proceedings and giving the Respondent opportunities to make submission or object to the Complaint being filed in English.

The panel has considered the Complainant’s submissions as to why the proceeding should proceed in English and does not find any of the submissions strongly persuasive. On the other hand the Respondent has not responded to the proceedings nor objected to the Center’s decision on the language of proceedings. The Panel has determined that in case it is most appropriate to allow the parties a further opportunity to make submissions as to the language of proceedings.

The Panel therefore orders:

1. Within five days of receipt of this Procedural Order No. 1 the Complainant is requested to provide any further submissions on the language of proceedings it may have.

2. Within five days of receipt of this Procedural Order No. 1 the Respondent is requested to make any submissions it may have on the language of proceedings.

The due date for Decision will be extended accordingly.”

The Center notified both Parties in Japanese and English of the above Procedural Order.

On October 17, 2008, the Complainant provided a further submission. The Respondent did not make any submission by the October 21,2008 deadline. On October 22, 2008, the Center notified the Panel of the Respondent’s default in responding to the Procedural Order.

The Complainant submitted that the Respondent waived its opportunity to object to the request for the language of the proceedings to be in Japanese. In particular the Complainant relied on the fact that the Respondent had taken down its website and replaced it with a site stating only words “www.zumbajapan.com” on a white background after receiving notice of these proceedings.

These submissions do not, in the Panel’s view, add much to the arguments previously filed by the Complainant. The Panel is satisfied that the Respondent has had notice of the proceedings; the Panel has only limited evidence to decide if the Respondent understands the nature of all allegations made in the Complaint against it. This is of particular concern to the Panel because in its request relating to the language of proceedings, the Complainant made allegations of copyright infringement against the Respondent without any supporting evidence to show subsistence or ownership of the copyright. The allegation of copyright infringement was not, however, repeated in the Complainant’s arguments on substantive issues.

On the other hand, as mentioned, a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the complaint in a particular language, in addition to the Procedural Order concerning the language of proceeding is certainly a strong factor to favour proceeding in line with the Center’s preliminary decision to accept the Complaint as filed in English, and to proceed to the extent possible in both languages.

The Panel does note, however, from the printouts of the Respondent’s website submitted by the Complainant, that the Respondent is aware of the popularity of ZUMBA Dancing in the United States. The front page of the website states (in Japanese) “Big Hit All over America. Zumba etc Latin style dance has finally arrived in Japan”. The Panel also notes that are a number of products on the website sourced from the United States and DVDs and CDs which have Japanese language explanations of these English language products. This suggests that the Respondent has at least some understanding of the English language

Conclusion at to Language of Proceedings

The issue as to appropriate language of proceedings has caused this Panel to spend far more time on these proceedings than is appropriate and has delayed the handing down of a decision by the need to give the parties a further opportunity to make submissions as to the language of proceedings. As can be seen from the decision on the merits set out below, this is a relatively simple case which should have been disposed of quickly if it had been filed in the language of the registration agreement. The Complainant, however, elected to file in English and requested English be the language of the proceedings without providing satisfactory evidence or reasons for English to be the language of the proceedings. The Complainant also did not translate Japanese language evidence into English, some of which, in fact, is useful to the Complainant’s case.

The Center’s dual language approach, however, provided the Respondent with ample opportunity to object to the Complaint being filed in English and to file a Response in Japanese. The Respondent did not do so despite being given a further opportunity by this Panel. In fact, as noted by the Complainant, the Respondent has replaced its website with a blank page reading only “www.zumbajapan.com”. The fact that apparently in response to these proceedings the Respondent has stopped trading under the disputed domain name together with the lack of any communication as to language from the Respondent even after receipt of the Procedural Order, and absent a Response, the merits of the case being strongly in favor of the Complainant, lead this Panel to conclude, on a very fine balance, that in the circumstances of this case, the proceedings be allowed to go forward with the Complaint as filed in English and, because the Panel can read Japanese, without requiring translation of the Japanese language evidence. The Respondent was free to file any response in Japanese but has declined to do so. The decision will be issued in English. If the Respondent had made a formal request, the Panel would also have issued a decision in Japanese.

The panel was concerned also that unsupported allegations of copyright infringement were made in the submissions in relation to the language of proceedings. Such allegations would normally favour the Complaint being translated into the language of the Respondent to give them an opportunity to fully understand the nature of the allegations being made against them. However, as these allegations were not repeated in the claim on the merits, the Panel will consider the merits of the case putting these allegations out of its mind.

The Panel emphasises that this decision should not be taken as a precedent for filing a Complaint in a language different to the registration agreement without good grounds to do so in the hope of a default by the Respondent. This could lead to delays where, even if there is a default, where the Panel deciding the matter determines that it is appropriate for a translation of the Complaint to be filed.

6.2 Substantive Elements of the Policy

There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.

Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:

(i) The domain name is identical or confusingly similar to the Complainant’s trademark or service mark;

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

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant submitted trademark registration certificates for trademark ZUMBA and “Zumba Fitness” registered in United States of America and Japan. The Panel has confirmed the Complainant’s trademarks registered for video products, clothing and education services in the field of exercise and physical fitness. The Panel finds that the Complainant has legitimate rights over the above trademarks which include the term “zumba”.

By comparing the domain name and the Complainant’s trademarks, the Panel notes that the domain name <zumbajapan.com> wholly comprises the Complainant’s ZUMBA mark and only differentiates from the mark with the additional geographical indicator “japan” as a suffix. The mere addition of the geographical term “japan” to the mark does nothing to alleviate the confusing similarity between the domain name and the mark ZUMBA. On the contrary, the composition of the domain name will undoubtedly suggest that the goods and services in connection with the domain name originate from or are specially designed by the Complainant for the Japanese market or at least indicate the Respondent has some sort of business relationship with the Complainant. Therefore, the Panel finds that the additional use of a geographical indicator to the Complainant’s mark ZUMBA cannot be distinguished from the Complainant’s mark and is likely to make consumer confusion to the contrary.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Panel concludes that the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Taking into account the Respondent’s default, the Panel accepts the Complaint that the Respondent is neither affiliated or associated with the Complainant, nor authorized by the Complainant to use the trademark ZUMBA or to register or use any domain name incorporating any trademarks of the Complainant.

The Panel has reviewed the printouts of the homepage of the Respondent’s website and compared it with the Complainant’s website. The Panel notes that although the layout of the homepage of the Respondent’s website is not the exact same as that of the Complainant, the overall impressions of both Parties’ sites are still similar on the basis of the pictures of energetic dancers on both sites’ homepages in particular a large banner on the Respondent’s website stating (in Japanese) ZUMBA is a “Big Hit all over America”. In addition, the website bearing the domain name is offering certain of the Complainant’s products as well as similar or competing products such as video materials and apparel related to exercise and fitness.

Based on the above findings, the Panel concludes that the Respondent’s website under the domain name <zumbajapan.com> has an overall impression similar to that of the Complainant and offers products and services in direct competition with the Complainant. This suggests that the Respondent’s website is the official “Zumba” website in Japan, or at least has affiliation, authorization or some kind of business relationship with the Complainant, which is likely to cause consumer confusion.

Therefore, pursuant to Policy, the Panel has finds that the Respondent does not have any rights or legitimate interest in the domain name.

Accordingly, the Panel finds that the Complaint has satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Before the Respondent took down its website, the website made references to ZUMBA dancing coming from America and offered for sale the Complainant’s products by making direct reference (in Japanese) to “Zumba Fitness”. Added to that the fact that the domain name was registered in late November 2007 several months after the registration of the Complainant’s mark ZUMBA in Japan, the Panel has no difficulty in finding that the Respondent registered and has used the domain name in bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.

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 <zumbajapan.com> be transferred to the Complainant.

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Douglas Clark
Sole Panelist

Dated: November 2, 2008