Domain Name - Domain name dispute resolution policy - Japanese Trademark - Identical - Confusingly similar - No rights or legitimate interest - Selling for in excess of out of pocket expenses - Bad faith registration - Bad faith use.

Complainant, an internet service provider and general on-line service provider in Japan, was registrant of a Japanese trademark, "PostPet".  Respondent registered the domain name postpet.net. 

Held: Name transferred to Complaintant

There was no response from Respondent.  Complainant's trademark, "PostPet", is well known among internet users all over Japan.  Clearly, the domain name, postpet.net, is identical to the trademark registered and used by Complainant.  It is also clear that Respondent has no rights or legitimate interest in respect of the domain names. 

The domain name was initially registered on March 10, 2000 and Respondent has made no use of the domain name.  Further, Respondent offered to sell the contested domain name for valuable consideration in excess of any out-of-pocket costs directly related to the domain name.  Respondent demonstrated bad faith use of the mark.

Policies referred to 

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Rules for Uniform Domain Name Dispute Resolution Policy, adopted October 24 1999

WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Registration Agreements referred to
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Cases referred to
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Panel Decision referred to
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Kitagawa Zentaro, Doi Teruo and Lee Moon Sung 

1. The Parties

The Complainant:

Sony Communication Network Corporation 
Gotenyama Hills, 4-7-35 Kita-Shinagawa, Shinagawa-ku, Tokyo 140-0001, Japan

The Respondent: 

Kaoru Tanaka 
2-25-26 Hataya, Atsuta-ku, Nagoya, Aichi-ken 456-0027, Japan

2. The Domain Name and Registrar

The Disputed Domain Name: postpet.net 

The Registrar with which the domain name is registered: InterQ Inc. 

E-mail: admin@discount-domain.com

 3. Procedural History

This Complaint was submitted on May 17, 2000 by e-mail and on May 23, 2000 in hard copy against the Respondent with the WIPO Arbitration and Mediation Center (the Center) for decision in accordance with the Uniform Policy For Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). 

A copy of this Complaint has also been sent to the Registrar, InterQ Inc., with which the Respondent has registered his Domain Name, <postpet.net> that is identified in the Complaint. The Domain Name <postpet.net> was registered by the Respondent on March 10, 2000, and the registration agreement was made in Japanese. Since the registration agreement, pursuant to which the domain name is registered, incorporates the Policy, this dispute is within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

The Complainant requests that the domain name <postpet.net> be transferred to it. The payment, required by the Rules and Supplemental Rules, was made by the Complainant.

The Respondent did not respond to the Complaint by the due date and on June 13, 2000. A Notice of Respondent Default was sent to the parties. No reply by the Respondent to the Notification of Respondent Default was received. On July 6, 2000 the Center notified the parties of the appointment of the Administrative Panel. In accordance with Paragraph 7 (c)(ii) of the Supplemental Rules, the Administrative Panel is properly constituted.  

4. Factual Background

The Complainant was established on November 1, 1995 as an internet service provider and general on-line service provider in Japan. 

The Complainant has the trademark "PostPet," registered with the Japanese Patent Office for clothing, garters, stocking suspenders, etc., in Int. Class 25 for a term of 10 years from March 13, 1998; for physical or chemical apparatus/instruments, electrical distribution or control machines/instruments, etc., in Int. Class 9 for a term of 10 years from April 10, 1998; for provision of information relating to the method of use of e-mail through Internet, in Int. Class 38 for a term of 10 years from June 26, 1998; for papers, packing containers of papers, printed matter, etc., in Int. Class 16 for a term of 10 years from August 7, 1998; and for game machines, toys & dolls, toys for domestic pets, etc., in Int. Class 28 for a term of 10 years from August 21, 1998.

The Complainant released the beta version of its PostPet e-mail software (the "Program") in January 1997 on the Internet. "PostPet DX" was released in November 1997 and "PostPet 2001" in December 1998. The Program won several awards. 

On April 16, 2000, the Complainant received an e-mail from the Respondent who is offering to sell his domain name <postpet.net> to the Complainant with the deadline of about two weeks for the Complainant to respond. While attempting to extend the above deadline, the Complainant became aware of the Uniform Domain Name Dispute Resolution Procedure and filed this Complaint with the WIPO Center.

5. Parties Contentions

The Complainant contends as follows:

Firstly, the Respondent's registered <postpet.net> is identical to the Complainant's trademark "PostPet." 

Secondly, the Respondent has no right or legitimate interest in respect of the domain name. When the Respondent's domain name was registered on March 10, 2000, the Complainant's trademark PostPet was well-known among Internet users all over Japan. Thus, the Respondent has no right or legitimate interest. 

Thirdly, the Respondent later offered to sell the domain name to the Complainant for JPY 3,000,000, with the deadline of two weeks for the Complainant to respond. This shows that the Respondent has registered and used the domain name in bad faith. 

The Respondent has not responded to the Complaint.

 6. Discussion and Findings

The Complainant contends that in accordance with the Policy Paragraph 4(a), the Respondent is required to submit to a mandatory administrative proceeding because: 

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

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

(3) The domain name was registered and is being used in bad faith. 

It is clear that the domain name <postpet.net> is identical or confusingly similar to the trademark "PostPet" registered and used by the Complainant. The Respondent is not the registered owner of any trademark or other intellectual property containing the word "PostPet." After registration of the domain name on March 10, 2000, the Respondent has not used the domain name. In light of those facts, the Respondent has no right or legitimate interest in respect of the domain name in dispute. Since the Respondent offered to sell the domain name to the Complainant for valuable consideration in excess of any out-of-pocket costs directly related to the domain name, the Respondent has used the domain name in bad faith.

Based on the evidences submitted by the Complainant, the Panel find that its contentions are proved.

7. Decision

In accordance with the Policy Paragraph 4 (i) and the Rules Section 15, and for all the foregoing reasons, the Panel requires the registered domain name <postpet.net> be transferred to the Complainant.
 

Zentaro Kitagawa
Presiding Panelist
Teruo Doi, Moon Sung Lee 
Panelists
June 18, 2000