ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant: Mikimoto (America) Co., Ltd
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 14, 2000. The hardcopy of the Complaint Form was received on February 15th, 2000. Payment was received on February 15th, 2000. Upon receiving all the required information, eResolution's clerk proceeded to:
The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information including the billing contact. The Contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on February 16, 2000. That date is the commencement date of the administrative proceeding.
On February 17, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On March 7, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on March 20, 2000.
On March 20, 2000, the Clerk's Office contacted Mr. L. Joseph Gibbons, and requested him to act as panelist in this case.
On March 21, 2000, Mr. Gibbons, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On March 22, 2000, the Clerk's Office forwarded a user name and a password to Mr. Gibbons, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On March 22nd, 2000, the parties, the Registrar and ICANN were notified that Mr. Gibbons had been appointed and that a decision was to be, save exceptional circumstances, handed down on April 7th, 2000.
3. Factual Background
Complainant, Mikimoto (America) Co. is the registered holder of two United States trademarks on which the disputed domain name is allegedly based MIKIMOTO (U.S. Trademark Registration 645,389, registered May 14, 1957) and MIKIMOTO (U.S. Trademark Registration 829,077, registered May 23, 1967). Respondent Asanti Jewellers, Ltd. is a distributor of MikimotoŽ cultured pearls. There is no dispute that Complainant owns MIKIMOTO as a trademark. Respondent registered the mikimoto.com as a domain name. For the sake of greater clarity, I have stated the factual allegations along with the parties' contentions below.
4. Parties' Contentions
I have restated the parties' contentions in their own language while slightly editing for clarity and transitions.
Complainant, Mikimoto (America) Co. alleges that Respondant, Asanti Fine Jewellers, Ltd. registered the domain name mikimoto.com in violation of the Uniform Domain Name Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers.
Complainant is the registered holder of two United States trademarks on which the disputed domain name is allegedly based MIKIMOTO (U.S. Trademark Registration 645,389, registered May 14, 1957) and MIKIMOTO (U.S. Trademark Registration 829,077, registered May 23, 1967). Complainant alleges that the domain name MIKIMOTO.COM is (apart from the generic Top Level Domain ". com" suffix) identical to the registered trademark MIKIMOTO.
Complainant further alleges that Registrant/Domain-name holder ("Asanti") is not an owner, assignee, transferee, purchaser or licensee of any rights in the name MIKIMOTO.
Complainant only permits Asanti to use the MIKIMOTO name specifically in connection with the promotion and resale of Mikimoto products at Asanti's retail place of business in San Marino, California.
Complaint contends that Respondent, Asanti Fine Jewelers, Ltd. (Asanti or Respondent), has demonstrated its bad faith by:
1. Failing to notify or consult Mikimoto prior to Asanti's registering, as a domain name, Mikimoto's famous trademark: MIKIMOTOŽ.
2. Certifying in its application to register MIKIMOTO.COM that such registration did not interfere with or infringe upon the rights of any third party, when Asanti knew or should have known that its registration would both interfere with and infringe upon Mikimoto's rights in MIKIMOTOŽ.
3. Refusing to relinquish MIKIMOTO.COM without payment by Mikimoto America of a substantial sum, well in excess of Asanti's out-of-pocket costs directly related to that domain name.
4. Attempting to use its ownership of MIKIMOTO.COM to coerce Mikimoto into committing to continue doing business with Asanti.
5. Threatening to sell MIKIMOTO.COM to an Internet speculator.
6. Preparing to launch, under the name MIKIMOTO.COM, a web site designed by Asanti without any input from or approval by Mikimoto.
7. Preparing to link that web site to Asanti's existing web site (ASANTI.COM), for the conscious purpose of associating the famous MIKIMOTOŽ trademark with Asanti's multi-line retail jewelry business and the other, non-Mikimoto brands of cultured pearls that Asanti sells.
8. Intentionally thwarting Mikimoto's plans to use MIKIMOTO.COM for Mikimoto's own web site, which is designed to promote MIKIMOTOŽ products and publicize the distributors (including Asanti) that sell those products at retail.
Complainant seeks as a remedy to have the domain name mikimoto.com transferred to it.
Respondent, Asanti Fine Jewellers, Ltd., contends that it has not violated the Uniform Domain Name Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers. Respondent alleges that the domain name mikimoto.com refers to Kokichi Mikimoto, the creator of the cultured pearl and that a search of the Internet reveals a pathetically scarce amount of information on this great man's life, hence Respondent's interest in providing a non-commercial biographical web site. Accordingly, Respondent claims that its usage of the domain name mikimoto.com is not a prohibited trademark usage as an adjective but rather the permitted use of the domain name as a proper noun because Respondent's mikimoto.com website refers to the man and not trademark associated with the cultured pearl product.
Respondent alleges that Mr. David Gasway of Mikimoto has repeatedly attempted to cajole and harass Asanti into giving Mikimoto (America) Co. the mikimoto.com domain name, and failing that, offered to purchase the domain name from us.
Respondent denies telling Mr. Gasway either verbally or in writing, that the mikimoto.com domain name was for sale. Respondent states that:
Yet, after his persistent badgering, in an attempt to keep the peace between our firms, I finally agreed to consider his offer. When he asked for a number, I off handedly mentioned that I didn't know, but that perhaps publishing a book in one's field of endeavor, regardless of subject, might bring about some increased recognition as an authority in the field. I have been published in trade journals before on the subject of management, and have found this to be the case. I thought perhaps that this might result in a rather modest increase of 5% in sales over the next ten years. This increase, I explained, was strictly hypothetical and simply assuming a byline on the author. There was never to be a direct link to the www.asanti.com website, as this was to be a strictly non-commercial site, but rather a copyright line. Mr. Gasway then made a proposal to us based on what he viewed as "my formula" for an increase in our pearl business. I responded to this with a more complete picture of our pearl business, again stating that I had no real interest in selling the domain name. No offer was ever made to sell the domain name.
Respondent rejects allegations of bad faith claiming that:
(1) The domain name mikimoto.com has never been used in commerce or offered for sale.
(2) Mikimoto.com has never had any content that would interfere with the complainant's trademark rights.
(3) Mikimoto engaged in retaliatory business practices against Asanti because of the disagreement over the domain name. Only after Respondent mentioned that this was an unfair trade practice did Mikimoto resume shipping merchandise. As Mikimoto has shown a history of retaliating against Respondent, Respondent had no confidence that it would remain authorized agents even it transferred the domain name. Therefore, Respondent's desire for a guarantee against retaliation did not represent trading on the value of Mikimoto's trademark, rather an attempted to be treated the same as other distributors.
(4) Respondent based its claim to the charleskrypell.com domain name on creating a jewellery designer biography page. Respondent abandoned this idea because it lacked public interest. Again, the charleskrypell.com domain name was never offered to anyone for sale and was recently transferred without cost to Mr. Charles Krypell.
(5) Respondent never threatened to sell the mikimoto.com domain name to an Internet speculator, and in fact, none of the domain names owned by Respondent have ever been listed for sale, publicly or privately.
(6) Respondent has never exploited the commercial value of the domain name.
(7) Complainant made an offer to purchase the name in an effort to coerce us into trading on the value of their trademark so that they could bring action against us.
(7) Any value Respondent would receive from the ownership of the domain name mikimoto.com would be because of authoring an online biography of a public figure, distinct from the word's trademark value.
(8) Respondent has a stake in maintaining the strength and integrity of the MikimotoŽ brand product line.
(9) Contrary to Mr. Gasway's affidavit, Respondent did speak to representatives of Mikimoto (America) about jointly developing the site at the Couture Collection and Conference in 1997. That offer was flatly rejected.
(10) Mr. Gasway's offer of the kokichimikimoto.com web address as a suitable site for us to develop a biographical web site is patently bogus. This is evidenced by our telephone conversation of 6 March 2000 in which I agreed to give MikimotoŽ the mikimoto.com web address if I could receive assurances that we would have no challenge from Mikimoto on the kokichimikimoto.com domain name. He could make no such assurances.
(11) The Internet is a medium that originated in educational institutions, allowing for the free dissemination of concepts, ideals and information. As a reference, it is unparalleled by a thousand libraries. Respondent seeks to use this medium to communicate the history of this great inventor to the world. Mikimoto already has two available domain names, one of which clearly speaks to their trademarked product line.
5. Discussion and Findings
Under the Uniform Domain Name Dispute Resolution Policy (UDNDP Policy), the burden is on Mikimoto (America) Co. (Complainant) to prove each of three elements by a preponderance of the evidence.1 Mikimoto must prove that Asanti Fine Jewellers, Ltd. (Respondent) registered a domain name that is identical to or confusingly similar with Complainant's trademark or service marks, that Respondent has no rights or legitmate interest in the domain name, and finally, Respondent registered and used the domain name in bad faith. I will address each of these elements and the related defenses in turn.
(1) Asanti Fine Jewellers, Ltd.'s (Respondent) registered domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
The parties do not dispute that MIKIMOTO is a registered trademark in the United States. MIKIMOTO is registered under U.S. Trademark Registrations 645,389 and 829,077 (Annexes D and E). MIKIMOTO is a registered trademark of K. Mikimoto & Co., Ltd., 2 W. 46th St. New York, New York. Respondent registered mikimoto.com as a domain name (Annex C). I find that the Complainant's registered trademark is identical to or confusingly similar with Respondent's registered second level domain (SLD) name mikimoto. Accordingly, I find in favor of the Complainant on the first element.
(2) Respondent has no rights or legitimate interests in respect of the domain name;
The UDNDP Policy provides examples of rights or legitimate interests. These examples include the bona fide provision or offer of goods or services prior to notification of the domain name dispute, brand name use or common law trademark rights, or noncommercial or fair use of the domain name. Because the parties do not raise any contentions that do not fall with the exemplar circumstances provided by the UDNDP Policy, I will limit my discussion to the applicability of each in turn.
(a) before any notice to Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
There is no evidence that Respondent used the mikimoto.com domain to provide goods or services before the Complainant challenged Respondent's registration of the domain name. Respondent does not document any preparations to use the challenged domain name. Accordingly, I find that this is not a legimate interest of the Respondent.
(b) Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
Respondent does not claim to hold rights the same or a similar mark through federal registration, state registration, or even through common law use. Further, there is no evidence of Respondent using Mikimoto as a trade name, corporate name, "doing business under" (DBA) name, or similar usage that would provide a legitimate reason that would justify both the Respondent's interest in the domain. Accordingly, I find that this is not a legitimate interest of the Respondent.
(c) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Whether the Respondent has a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark requires a careful consideration of the facts. The disputed domain name was placed on hold before the Respondent has an opportunity to place content on a web page associated with the domain name. Therefore, all that the record contains is Respondent's statements as to Respondent's intended uses. Respondent states in correspondence between the parties and in its response that its intent is to establish a historical and biographical site dedicated to Kokichi Mikimoto, the father of the cultured pearl industry. As stated, this would be a noncommercial or fair use of the domain name.
However, this is not the complete record, in addition to creating a "noncommercial" biographical web site, Respondent intends to link from the disputed domain name to Respondent's business. Respondent avers in his response that it did not intend to link from the "noncommercial" mikimoto.com page to asanti.com page. Notwithstanding this statement, Respondent stated that its online biography would result in "heightened awareness and credibility for Asanti" and a projected increase of 5% per year across the board in cultured pearl sales. I find Respondent's claim that it would not link mikimoto.com to asanti.com not entirely credible.2 I find that based on existing e-commerce models, the most economically rational method for the Respondent to reap "heightened awareness and credibility" is to link between the disputed domain name with the allegedly noncommercial content and the commercial asanti.com site selling cultured pearls. Finally, although this is the type of domain name that naturally leads to consumer confusion, I find it particularly telling that Respondent did not offer to take reasonable measures, for example disclaimers of association with Complainant or warnings in meta tags, to help consumer confusion.
For the foregoing reasons, I find that Respondent does not have a legitimate reason to use the disputed domain name.
(3) Finally, that Respondent's domain name has been registered and is being used in bad faith.
The UDNP Policy provides a suggestive by not an exhaustive list of examples of bad faith. Among the exemplar circumstances that may indicate bad faith are cybersquatting, past practice of preventing trademark and service mark holders from using their marks as domain names, registration for the purpose of interfering with a competitor, or creating likelihood of consumer confusion.
(a) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondents documented out-of-pocket costs directly related to the domain name; or
Respondent and Complainant apparently spent a year discussing or negotiating proposals to transfer mikimoto.com from the Respondent to the Complainant for consideration. The sums were well in excess of Respondent's out of pocket expenses. Respondent claims that he merely listened to proposals as a matter of professional courtesy. Complainant states that Respondent actively sought proposals. On February 8, 1999, Complainant memorialized in part a conversation with Respondent. When Complainant telephoned Respondent to demand the return of the domain name, Respondent asked Complainant for a proposal.3
Complainant clearly considered the February 1, 2000 telephone conversation as part of on going series of negotiations to buy the disputed domain name. In Complainant's February 3, 2000 letter, Complainant calculates the value of the domain name and associated web page based on the agreed. On February 8, 2000, Respondent answered Complaint's February 3 letter. Respondent denied that the domain name was for sale and further stated that Respondent only listened to Complaint's offer to maintain goodwill between the two businesses. Yet tellingly, Respondent then accepted the methodology of calculating the value of the domain name but insisted on a different starting baseline figure. Respondent then asserts that it has "no real interest in selling the domain name." If Respondent had no real interest in using this figure as a basis on which to negotiate a selling price then Respondent had no reason to correct the premises on which the value of the page was calculated. Absent serving as a value for the domain name, these calculations were meaningless. Further, there appears an ongoing theme throughout the year long correspondence to use the domain name to obtain leverage either coerce or encourage Complainant to do business with Respondent on the same terms as other distributors in the United States.
I find that in light of the totality of the circumstances resolving any disputed facts that the Respondent acted in bad faith because Respondent attempted to sell or leverage the disputed domain name for commercial advantage or financial gain in excess of Respondent's reasonable out-of-pocket expenses.
(b) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
Respondent has registered one prior disputed domain name (charleskrypell.com). A single prior instance of registering a domain name to keep the holder of the trademark from using it coupled with the instance before the arbitrator may be sufficient under some circumstances to constitute a pattern of conduct. This is particularly true when there are substantial similarities in the types of marks that comprise the corpus of the disputes. Here, both disputes involve the names of well-known artists. The artist's surnames comprised the mark at issue. Respondent avers and this is nothing in the record to contradict this that it registered charleskrypell.com in a prior attempt to start a noncommercial web page honoring the well-known artist Charles Krypell. After Respondent learned that there was no demand for such a web page, Respondent transferred the domain name to Charles Krypell. Although, these disputes are comparable, a careful examination of the facts does not support a finding that Respondent has engaged in an improper pattern of conduct regarding domain name registrations.
Therefore, I find that under the circumstances of this case that Respondent's one prior disputed registration does not provide a basis on which to find a pattern of such conduct.
(c) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
There is no evidence that Respondent registered the disputed domain name primarily for the purposes of disturbing the business of a competitor. I find that the Respondent did not register the domain name primarily to disrupt the business of a competitor.
(d) by using the domain name, Respondent has 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 Respondent's web site or location or of a product or service on Respondent's web site or location.
As was discussed earlier, in addition to creating a "noncommercial" biographical web site, Respondent intended to link from the disputed domain name to Respondent's business. Respondent avers in his response that it did not intend to link from the "noncommercial" mikimoto.com page to asanti.com page. Notwithstanding this statement, Respondent stated that its online biography would result in "heightened awareness and credibility for Asanti" and a projected increase of 5% per year across the board in cultured pearl sales. I find Respondent's claim that it would not link mikimoto.com to asanti.com not entirely credible.4 In addition, Respondent offered a link the mikimoto.com site to the Complainant at no cost. I find that based on existing e-commerce models, the most economically rational method for the Respondent to reap "heightened awareness and credibility" is to link between the disputed domain name with the allegedly noncommercial content and the commercial asanti.com site selling cultured pearls. By controlling the disputed domain name which is identical to Complainant's trademarks and sites that link from it, Respondent will be in a preferred position to refer confused consumers from the noncommercial site to commercial sites that sell MikimotoŽ cultured pearls. This places the Respondent, merely one of many distributors, in a unique position to control referrals to other distributors.
Finally, although this is the type of domain name that naturally leads to consumer confusion, I find it particularly telling that Respondent did not offer to take reasonable measures, for example disclaimers of association with Complainant or warnings in meta tags, to help consumer confusion.
For the foregoing reasons, I find that Respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location.
In sum, under 5(a) & 5(d) above, I conclude that Respondent acted with bad faith in registering the disputed domain name.
Based on the foregoing findings, the domain name mikimoto.com shall be TRANSFERRED from the Respondent to the Complainant.
Signed April 8, 2000, in the City of Toledo, State of Ohio, United States of America.
(s) Llewellyn Joseph Gibbons
1. Because neither party raised the issue by suggesting that I apply some other rule or body of law, I do not reach the issue of whether the UDNDP policy is binding both on the parties and on an arbitrator acting pursuant to a submission under the UDNDP policy. Consequently, I will apply the UDNDP policy to this dispute.