ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant The Dow Chemical Company, Inc. of Midland, Michigan, United States of America brought the present complaint against the Respondent Iryu Keiei Kenkyusho Ltd. of Osaka-Shi, Japan. The domain name at issue is : .com (dowchemical.com in Japanese Katakana letters). The complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy (ICANN policy), adopted by the Internet Corporation for Assigned Names and Numbers on February 23, 2001.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 23, 2001. The hardcopy of the Complaint Form and annexes were received on March 5, 2001. Payment was received on February 26, 2001.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry led the Clerk of eResolution to the following conclusions: the Registrar is InterQ Inc. The Whois database contains all the required contact information and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on February 26, 2001. The requested information was received March 4, 2001.
The Clerk sent 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's Office forwared the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on March 7, 2001. This date is the official commencement date of the administrative proceeding.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
On March 22, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on March 27, 2001, 2001.
Between March 28, 2001 and April 19, 2001, the Clerk's Office contacted 3 panelists and requested that they act in this case. None of them were able to act at this time. On April 23, Mr. Ross Carson accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On April 24, 2001, the Clerk's Office forwarded a user name to Mr. Ross Carson. On April 24, 2001 Mr. Carson obtained a password allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On April 24, 2001, the parties were notified that Mr. Ross Carson had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 8, 2001.
On April 24, 2001 the Clerk's Office forwarded to Mr. Ross Carson a request by the complainant, dated April 4, 2001, requesting leave to file a reply memorandum including a certification of translation of the Katakana characters comprising the domain name from an independent translator.
On April 25, 2001 Mr. Ross Carson forwarded an e-mail to the Clerk Office advising that the Complainant's request for leave to file evidence in the form of a certified translation of the Katakana characters is accepted. The Reply must be served within one week of April 25, 2001.
On April 30, 2001 the Clerk's Office forwarded by fax to Mr. Carson the Complainant's Reply Memorandum and on May 1, 2001 forwarded the Complainant's Reply Memorandum and Exhibits. The Reply Memorandum was also forwarded to the Respondent.
On May 2, 2001 the Clerk's Office forwarded an e-mail to Mr. Carson enclosing a request by the Respondent to reply to the Complainant's Reply Memorandum. On May 2, 2001 Mr. Carson advised the Clerk's Office by e-mail that the Respondent's request to respond to the Reply Memorandum is granted and that the Respondent's Reply must be served within one week of May 2, 2001.
On May 9, 2001 the Clerk's Office forwarded by e-mail to Mr. Carson the Respondent's Reply. The Clerk's Office advised that the Panelist's decision must be handed down no later than May 22, 2001.
3. Factual Background
This Complaint is based on the name and marks DOW CHEMICAL and DOW, owned by The Dow Chemical Company, Inc. ("Dow Chemical"). Dow Chemical and its predecessors have carried on business under the corporate and trade name THE DOW CHEMICAL COMPANY since 1895. Dow Chemical has over 2,400 product lines in diversified industries, including building and construction; household, personal care, and consumer products; cleaning products; chemical processing; plastics; agricultural and life sciences; oil exploration; pharmaceuticals and health care products; environmental services; utilities; textile manufacture; insurance; credit; financial; and banking. (Exhibit 1 to Complaint).
Dow Chemical's annual sales of products and services exceed $28 billion. Dow Chemical's annual advertising and promotion of its products and services have exceeded well over $300 million for each of the past ten years. Complainant submits that Dow Chemical's name and mark have become famous throughout the world as a result of its long and established use.
Complainant submits that Dow Chemical serves customers in more than 160 countries and has over 150 subsidiaries and affiliated companies throughout the world operating under trade names containing DOW and DOW CHEMICAL. Exhibit 2 is a list of Dow's subsidiaries that use the DOW CHEMICAL or DOW trade name. Dow Chemical also owns the domain names "dowchemical.com" and "dow.com" used in conjunction with its web site, which is accessed by thousands of Internet users every week.
Dow Chemical is the owner of U.S. Trademark Registration No. 140,588 registered on March 22, 1921. Dow Chemical owns approximately 65 U.S. trademark and service mark registrations of its DOW mark and marks containing that designation. Dow Chemical also owns over 2200 trademark registrations and applications for DOW marks worldwide. Copies of representative registrations and renewal certificates for registrations in the United States for DOW are atached as Exhibit 3. Exhibit 4 is a list of registrations owned by Dow Chemical for its DOW marks throughout the world.
Dow Chemical owns 65 registrations of DOW marks in Japan, including registrations of DOW in Japanese Katakana characters (the language used by Respondent in its dowchemical.com domain name).
Exhibit 5 is a list of Japanese registrations owned by Dow Chemical for its DOW marks. Copies of two Japanese registrations of DOW in Katakana characters owned by Dow Chemical are attached as Exhibit 6, namely Japanese Trademark Registration No. 1236313 for the trademark which is identical to the domain name in dispute .co, and Japanese Trademark Registration No. 1701493 which includes the Katanana characters which comprise the domain name in dispute.
Complainant further advises that on February 6, 2001 Dow Chemical completed a merger with Union Carbide Corporation, whose goods and services will be provided under or associated with Dow Chemical's name and mark.
4. Parties' Contentions
(i) The Complainant submits that the domain name .com, when translated to English/Roman Characters is "Dow Chemical " which is identical to the Complainant's name and mark DOW CHEMICAL and confusingly similar to Complainant's DOW marks.
(ii) The Complainant submits that the Respondent has no rights or legitimate interests in the domain name .com.
(iii) The Complainant submits that the Respondent registered and has used the domain name .com in bad faith.
(i) Identical or Confusingly Similar
Complainant submits that the domain name .com when translated to English/Roman Characters is "Dow Chemical " which is identical to the Complainant's name and mark DOW CHEMICAL and confusingly similar to Complainant's DOW marks. The domain name is also identical to Complainant's Japanese trademark registration in Katakana characters .
In Complainant's Reply Memorandum dated April 30, 2001 Complainant enclosed a certification from a professional translator attesting that Respondent's domain name "is a true and accurate translation of "Dow Chemical" from English to Japanese". Complainant submits that according to the only evidence submitted, the domain name is legally identical to Dow Chemical's DOW CHEMICAL trade name, trademark and domain name. Complainant cites WIPO Case No. D2000-1791, Sankyo Co., Ltd. V. Zhu Jiajun.
(ii) No Rights or Legitimate Interests
Complainant submits that the Respondent owns no trademark or service mark registration of DOW CHEMICAL in any language and does not use it as a mark for any services or products. Respondent does not use DOW CHEMICAL as a corporate or trade name. Complainant has never authorized Respondent to use the DOW CHEMICAL name and mark as a domain name or otherwise.
Complainant advises that Complainant's company has been the sole person to use the DOW CHEMICAL name over the past 100 years.
Complainant provided copies of its numerous registrations and information on its business (see Para 3 above).
Complainant's solicitors wrote to Respondent on two occasions, most recently on January 29, 2001, concerning Respondent's registration of the domain name in dispute. Respondent replied on February 2, 2001, advising that he wished to provide his definition of collectors. "By all means, we are no broker. We DO NOT buy and sell domains as our business. In fact, we have never ever purchased or sold any domains. We simply hope to enjoy the ownership of some domains and other items, perhaps to share our pleasure with our business and personal associates." (Exhibit 7 to Complaint).
In Complainant's Reply Memorandum dated April 30, 2001 Complainant addresses Respondent's remarks. Complainant submits that Respondent's comments are factually incorrect in its statements that (1) Japan is an extremely closed market so that complainant is not a household name in Japan; and (2) although complainant has Japanese registrations, they are not in Katakana. Complainant submits that it does have registrations in Katakana, namely Japanese Registration Nos. 1,701,493 and 1,236,313 () as well as other registrations of the DOW mark in Katakana, such as DOWPER, DOWCLENE and DOWFAX, Japanese Registrtions Nos. 750,455; 1,355,355; 2,484,313; 2,283,294; 1,464,239; 725,660, 1660,138; and 1,549,595. (Exhibits 5-6 of Complaint).
(iii) Registered and used in bad faith
Complainant submits that Respondent is aware of Dow Chemical and could not have registered "dowchemical" in Japanese script (without knowledge of the significance of that designation.
Complainant advises that Dow Chemical subsidiaries utilizing the "Dow Chemical" name include Dow Chemical Japan Limited (Exhibit 2) which has used the DOW CHEMICAL name and mark for several decades. Hundreds of millions of dollars worth of Dow Chemical products are sold every year in Japan. Dow Chemical also owns registrations of DOW in Katakana characters (Exhibits 5-6). Dow Chemical owns the dowchemical.com name in Roman letters. Complainant submits that Respondent is fluent in English as shown by his letter attached as Exhibit 7 to the Complaint.
Complainant submits that Respondent registered the dowchemical.com name in Katakana characters once it became aware of the new policy allowing registration of names in non-Roman symbols.
Complainant avers that the company where respondent is employed as shown by the letterhead used by Respondent is also the owner of other famous names translated into Katakana characters including "Mitsubishi Electrical.com". Complainant did not submit evidence to support this allegation.
Complainant submits that Respondent's reasons in his letter attached as Exhibit 7 to the Complainant make no economic or logical sense, exhibit some awareness of UDRP standards and suggest that respondent registers famous names because he became aware of a loophole in the domain name registration policies recently adopted. Respondent denied in his letter that he intended to use the domain name. Complainant submits that this remarks is disingenuous as domains with the top level .com designation that do not use Roman letters cannot yet be used.
Complainant submits that Respondent's remarks "If your objective is to save the cost, particularly time, of your clients we would recommend you to take different approaches" indicate that Respondent wishes to profit from the registration of the domain name.
Complainant submits that the registrations and Respondent's explanations for obtaining their ownership show bad faith warehousing of domain names and cites WIPO Case D2000-1791, Sankyo Co., Ltd. V. Zhu Jiajun.
(i) Confusingly Similar
The Respondent submits that Complainant does not understand Japanese and the Japanese language. Respondent submits that the use of Japanese Katakana words/characters could lead to similar or exact duplication of words or characters and that most Japanese Hiragana and Katakana letters have one or more meanings by themselves. Respondent provides examples of the translation into Katakana of English words. Respondent does not advise what meaning he intended by the Katakana "letters" contained in the domain name in dispute. Respondent relies on the argument that certain Katakana letters can have several meanings.
The Respondent submits that he does not have to disclose his business plan for the domain name. However, he will disclose that he has a plan to operate a few web sites as a not for profit charity such as a support site for non Japanese speaking foreigners living in Japan or as a watch dog site to review products that are sold from the United States to Asia.
(ii) No Rights or Legitimate Interest
Respondent submits that Complainant does not extensively market its line of products in Japan, and as far as Respondent is aware does not run "commercial programs" or advertising on the local television networks. Respondent submits that Complainant's name and products are not familiar to the general public in Japan and that it does not appear that the Complainant is a successful entity in Japan.
Respondent admits that Complainant has registered its English name in Japan but does not appear to have done so in the other forms of language such as Japanese Katakana. Respondent submits that Complainant's established history only applies to its name in English. Respondent submits that Complainant is not a well known company if its name is translated into foreign languages such as Katakana.
(iii) Registered and Used in Bad Faith
Respondent did not provide a response to the allegations of the Complainant with respect to Registration and Use in Bad Faith but relied on its arguments concerning (i) and (ii) above.
On April 30, 2001 Complainant submitted Complainant's Reply Memorandum, with Exhibits, relating in particular to the English translation of Respondent's Domain Name. Attached as Complainant's Exhibit 8 is a certification from a professional translator that Respondent's domain name .com is "a true and accurate translation of 'Dow Chemical' from English to Japanese.
Complainant submits that according to this evidence, the domain name in dispute is legally identical to Dow Chemical's DOW CHEMICAL trade name, trademark and domain name.
In Complainant's Reply Memorandum dated April 30, 2001 Complainant submits as Exhibit 9 the printout of the WHO IS database from Network Solutions web site showing domain names in Katakana characters registered to Iryu Keiei Kenkyusho Ltd. The names are listed in RACE code format, which is encoding language used for multilingual domain names. The second name on the list of domain names registered by Iryu Keiei Kenkyusho Ltd. and shown as BQ-3CB7DFX3.COM was translated by Network Solutions as "Mitsubishielectrical.com".
In Respondent's Reply dated May 8, 2001, Respondent submitted that the translation certificate attached to Complainant's Reply Memorandum does not fully explain the nature of Japanese as language and fails to indicate that Katakana words could have many meanings.
In Respondent's Reply dated May 8, 2001, Respondent advises that its plan is to operate a web site promoting Japan and Japanese to overseas. Respondent avers that the domain name .com consists of the Katakana symbols for three Sumo wrestling techniques - "Da" in Katakana stands for attack or hit, "Ukemi" receiving attacks and "Karu" sweeping (legs, which when combined make up the domain name "daukemikaru.com" in Katakana.
In Respondent's Reply dated May 8, 2001 Respondent denies that it owns any domains for Japanese corporations. Respondent submits that it owns a domain consisting of "Ryo Den" in two Kanji characters, which does not represent the corporate name of Mitsubishi Electric Corp. Respondent submits that it did not request to register "mitsubishielectrical.com" at any level. Respondent wishes to change this to "ryouden.com". Respondent submits that it registered a Kanji, not English domain.
Respondent also requests to have its domain "daukemicaru.com" in Katakana changed if this is erroneously registered as "dowchemical.com" at another level. Respondent submits that it did not request to register "dowchemical.com" and does not intend to hold that domain as it registered a Katakana domain, "daukemicaru.com" not in English or any other forms. However, Respondent states that it believes it has the legitimate right of holding its domain "daukemikaru.com" in Japanese Katakana ( .com).
5. Discussion and Findings
(1) Identical or Confusingly Similar
Paragraph 4(a)(i) of the ICANN policy requires that the Complainant establish that the domain name in dispute is identical or confusingly similar to the Complainant's trademark or trademarks.
The Complainant's trademarks are comprised of the words DOW and DOW CHEMICAL. The Japanese trademarks contains the Katakana translation of Dow or Dow Chemical () (see translation attached at Annex 9). Complainant has established that its trademarks have been in substantial use in the United States and numerous other countries and that sales of its products sold under the trademarks reached $20.1 billion U.S. in 1996. (Annual Report 1996, Annex 1). Complainant submits in its Complaint that sales in the year ending June 2000 amounting to over $28 billion U.S.
Exhibit 2 is a list of 180 Dow subsidiaries that use the DOW CHEMICAL or DOW trade name.
Complainant has established that it first registered the mark DOW in the United States on March 22, 1921 under U.S. Trademark Registration No. 140,588 and that it owns over 2200 registrations and applications for DOW marks worldwide. Complainant owns 65 registrations of DOW marks in Japan (Exhibit 5), including 11 registrations in Japanese Katakana characters. Copies of two Japanese registrations in Katakana are attached as Exhibit 6.
A review of the evidence provided shows that the Complainant's trademarks DOW and DOW CHEMICAL have received substantial use in the U.S. and other countries for many years. Japanese trademark registrations for DOW in Katakana symbols, Registration Nos. 1701493 and 1236313 were registered in Japan in 1984 and 1976 respectively. 9 further Japanese trademark registrations including the word or prefix DOW in Katakana characters are including in the list in Annex 5 to the Complaint. The two Japanese Trademark Registrations attached as Annex 6 to the Complaint contain the Katakana characters which are identical to the domain name in dispute .com.
The Complainant attached to its Reply Memorandum a certificate of translation attesting that the domain name .com is the Katakana equivalent of dow chemical.
Respondent has argued that the symbols represent daukemicaru in Katakana.
Respondent's explanation of his choice of the Katakana characters for his domain name were not submitted in his original response in which he discussed Japanese language and advised that Katakana characters can have several meanings. In the Respondent's Reply to Complainant's Reply Memorandum Respondent alleged that his choice of the domain name resulted from a choice of three movements in sumo wresting (daukemicaru) which resulted in a a translation of the domain name into the Katakana characters .
A visual comparison shows that the Katakana symbols contained in the domain name in dispute are identical to the symbols used in Complainant's two Japanese Trademarks which are registered in Katakana which were attached as Annex 6 to the Complaint. With regard to the translation of the symbols, having reviewed the proof and submissions I consider that Complainant has proved that the translation of the Katakana characters into the English language results in the words "dowchemical". Complainant registered Japanese trademarks in Katakana symbols which resulted in Katakana symbols identical to those in the domain name in dispute. Respondent submits that the translation of the Katakana characters is "daukemicaru". When pronounced this is phonetically confusingly similar to Complainant's DOW and DOW CHEMICAL trademarks. I find that the domain name in dispute .com is identical or confusingly similar to the Complainant's trademarks.
(2) No Rights or Legitimate Interest
Paragraph 4 (a) (ii) of the ICANN policy requires the Complainant to establish that the Respondent has no rights or legitimate interest in the domain name in dispute. Paragraph 4.c. of the ICANN Policy sets out some circumstances which if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate Respondent's rights to and legitimate interests to the domain name for purposes of Paragraph 4.a.(ii).
It is not contested that Complainant has not authorized Respondent to use the DOW trademark.
In January 2001 the Complainant's solicitors wrote to Respondent concerning Complainant's Trade Mark rights in its DOW trademarks which had been converted into the domain name in Katakana characters .com. On February 2, 2001 Mr. Yungho Pok replied by fax advising, among other remarks that "we simply hope to enjoy the ownership of some domains and other items, perhaps to share our pleasure with our business and personal associates...... we do know a few things relating the industrial right settlement center here. It costs JPY 180,000 as application fee to file a complain.... If your objective is to save the cost, particularly time, of your client, we would recommend you to take different approaches".
In its Response the Respondent submitted that he does not have to disclose his business plan for the domain name. However, he discloses that he has a plan to operate a few web sites as a not for profit charity such as a support site for non Japanese speaking foreigners living in Japan or as a watch dog site to review products that are sold from the United States to Asia.
Subsequently, on May 1, 2001, in its Reply to Complainant's Reply Memorandum, Respondent advised that its plan is "to operate a web site promoting Japan and Japanese to overseas. Since the Sumo wrestling is quite well-known around the world, we decided to use some of the techniques used in that sport as our domain." Respondent avers that the domain name .com consists of the combination of three Sumo wrestling techniques, "Da", "Ukemi" and "Karu" constituting the domain "daukemikaru.com".
Respondent has contradicted himself regarding his business plan disclosed in his Response and the different business plan disclosed in his Reply.
The Respondent has not provided evidence of circumstances of the type specified in the ICANN Policy, 4.c. Respondent has not submitted any evidence of preparation of a website or business plan. There exists no evidence that the Respondent, before receipt of any notice of the dispute, had used the domain name or a name corresponding to the domain name in connection with bona fide use of the domain name; or that Respondent had been commonly known by the domain name; or that the Respondent is making a legitimate noncommercial or fair use of the domain name.
Respondent has not provided evidence of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. As such, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
Paragraph 4.c. sets out examples of circumstances which if proved demonstrate a Respondent's right and legitimate interest in the domain name in dispute. After reviewing all the statements and proof, I find that based on the evidence presented the Complainant has established that the Respondent has no rights or legitimate interest in .com.
(3). Bad Faith Registration and Use
Paragraph 4(a) (iii) of the ICANN policy raises the issue whether the domain has been registered and is being used in bad faith. Paragraph 4.b. supplies four examples of situations which, if any of them is found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
On February 2, 2001 Mr. Yungho Pok wrote to Complainant's solicitors advising, among other remarks, that "we simply hope to enjoy the ownership of some domains and other items, perhaps to share our pleasure with our business and personal associates...... we do know a few things relating the industrial right settlement center here. It costs JPY 180,000 as application fee to file a complain.... If your objective is to save the cost, particularly time, of your client, we would recommend you to take different approaches".
It has been established that Respondent also registered the domain name mitsubishi.com in Kanji characters. Respondent has denied this but the Whois database shows Respondent as the owner of the domain name mitsubishi.com. Respondent submits that it registered ryoden.com in two Kanji characters. Respondent wishes to change its registration for mitsubishi.com to "ryouden.com" .
Regarding the Respondent's desire to change its domain names, this proceeding does not permit a panelist to order correction of a domain name if it has been wrongly registered. If Respondent wishes to register different domain names it must proceed by the normal registration route. Panelist does not have access to translations of domain names in Kanji or Katakana characters and accepts the Registrar's report that Respondent is the registrant of mitsubishi.com in Kanji.
Respondent has failed to convince the panelist that it chose to register the Katakana characters in the particular order in which they appear in order to create a domain name based on three movements in sumo wrestling. The panel considers that Respondent was aware of the identical Katakana characters used to signify Complainant's Japanese trademarks as well as Complainant's trade name and trademarks incorporating DOW and DOW CHEMICAL.
Prior to the date of the Complaint, Respondent had not been able to use the domain name in dispute as at the time the Complaint was filed domain names registered in the Internationalized Domain Name (IDN) Testbed were not yet capable of being used by registrants to direct users to the Web site of their choice. Commencing in May 2001 it is expected that internationalized domain names will be made accessible to internet users. Although the Respondent has not been able to actively use its domain name it might be inferred that Respondent intends to activate it when internationalized domain names become accessible on the internet, at which time users expecting to reach Complainant's website would be diverted to Respondent's site. However, Respondent has submitted no evidence of a plan for preparation of a web site. If Respondent did not intend to use the domain name attached to an active site it can be inferred that Respondent hoped to transfer it to the Complainant for profit.
After reviewing and assessing facts summarized immediately above I conclude that the Complainant has established on a balance of probabilities that the Respondent registered the domain name in dispute in bad faith and is using the domain name in bad faith by holding the same with a view to selling, renting or otherwise transferring the domain name .com to the Complainant who has developed a substantial goodwill in the trademarks DOW and DOW CHEMICAL including at least 2 Japanese trademark registrations in the Katakana characters which are identical to the domain name in dispute.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent's domain name has been acquired and registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain name .com be transferred to the Complainant.
Signed at Ottawa, Ontario, Canada this 17th day of May, 2001
(s) Ross Carson