Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Marubeni Corporation, Tokyo, Japan ("Complainant"). The Respondent is Eagle Data Limited, Hong Kong ("Respondent").

The domain names at issue are "MARUBENI.COM" and "MARUBENI.ORG", registered with Network Solutions Inc. ("NSI").

The Panelists certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/16/2000; The Forum received a hard copy of the Complaint on 08/14/2000.

On 08/18/2000, NSI confirmed by e-mail to The Forum that the domain names "MARUBENI.COM" and "MARUBENI.ORG" are registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 08/21/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 09/11/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@marubeni.com and postmaster@marubeni.org by e-mail.

On September 21, 2000, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, The Forum appointed Honorable Theodore Kupferman, Honorable Hideki Kojima, and Daniel B. Banks, Jr. as Panelists.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

1 - The Complainant, Marubeni Corporation (hereinafter MC), is a Japanese Corporation with its principal place of business in Tokyo, Japan.

2 - Marubeni America Corporation (hereinafter MAC) is a wholly owned subsidiary of MC which is incorporated in New York State.

3 - Complainant MC is a well-known international trade broker, financier and distributor involved in the fields of finance, industry, agriculture, consumer goods, commodities and natural resources.

4 - Complainant is the owner of numerous Japanese trademark registrations for the mark MARUBENI and is the owner of an U.S. Trademark Application for the mark MARUBENI for cotton fabric.

5 - The mark MARUBENI has been used by Complainant in the United States as a trademark and trade Name since as early as 1951 and is used by MC, MAC and related companies as the principal part of a trade name in the United States, Japan and throughout most of the world.

6 - Complainant owns the common law rights to the mark MARUBENI.

7 - Complainant MC owns the domain name marubeni.co.jp/home/english/index.html and MAC owns the domain name marubeni-usa.com.

8 - MARUBENI has formed the part of the company name of a large number of companies related to MC and/or MAC (the Marubeni Group) throughout the world.

9 - In North America, MARUBENI appears in the name of 25 currently existing corporate entities.

10 - MC and MAC have expended considerable effort and money in marketing their products and services to other businesses, distributors, wholesalers and retail stores in the United States since 1951.

11 - As a result of its extensive marketing and promotion, Complainant has established substantial good will in connection with its MARUBENI mark.

12 - Respondent is a company located in Hong Kong, HK.

13 - Upon information and belief, Respondent is engaged in registering domain names and then offering the domain names for sale to the public.

14 - Respondent registered the domain names marubeni.com and marubeni.org (hereafter "Domain Names") with full knowledge of Complainant's trademark and trade name rights in the MARUBENI mark.

15 - Respondent is not using either of the Domain Names for any legitimate commercial or noncommercial purpose.

16 - Respondent is soliciting bids for the marubeni.com domain name and has offered the domain for sale on GreatDomain.com for $188,000.

17 - Respondent's Domain Names are identical and /or confusingly similar to Complainant's trademark and trade name.

18 - Respondent's use of the Domain Names is trading on Complainant's mark and trade name and the good will associated therewith.

19 - Respondent's use of the Domain Names is likely to deceive the public into erroneously believing that those web sites are licensed, sponsored, endorsed or otherwise associated with Complainant.

20 - Respondent has no right or legitimate interest in said Domain Names.

21 - Respondent registered and is using the Domain Names in bad faith as evidenced by the offer to sell the Domain Name marubeni.com to Complainant or others for the sum of $188,000 which is far in excess of the out-of-pocket expenses of Respondent.

1 - Respondent admits the allegations numbered one through eight in Complainant's complaint. As a result of those admissions, Respondent agrees that:

2 - Respondent states that it is an Internet content company and has never registered a domain name with the intention of offering it to sale to the public.

3 - Respondent admits that it registered the Domain Names in question with full knowledge of Complainant's trademark rights in the mark and trade name MARUBENI.

4 - Respondent agrees that Complainant owns the common law rights to the MARUBENI mark and owns numerous Japanese Trademark Registrations as set out in Paragraph 14 of the complaint.

5 - Respondent agrees that the Domain Names in question are confusingly similar, if not identical to Complainant's mark as set out in paragraph 15 of the complaint.

6 - Respondent states that he did offer marubeni.com for sale for a short period after two years of inactivity on the part of the Complainant in expressing an interest in the name.

7 - Respondent states that he registered the Domain Names in question at a time when he was an employee of Complainant in order to prevent a cybersquatter from grabbing the names.

8 - Respondent states that it was his intention to transfer the domain names back to Marubeni.

9 - Respondent states that Marubeni did not appear to have any interest in using the names and he then activated the site www.marubeni.co.jp.

10 - Respondent admits that he listed several of his domain names for sale and priced them as suggested by a domain resale agent with marubeni.com being listed at $188,000.

After consideration of the matters submitted, it is the unanimous finding of the panel as follows:

1 - That the Domain Names marubeni.com and marubeni.org are identical and/or confusingly similar to Complainant's registered trademark and trade name.

2 - That the Respondent has no right or legitimate interest in respect of the Domain names in question.

3 - That the Domain Names in question were registered and are being used in bad faith.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent 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 has been registered and is being used in bad faith.

The Respondent has admitted that the domain names marubeni.com and marubeni.org are identical and/or confusingly similar to Complainant's registered trademark and trade name, "Marubeni".

The Complainant contends that the Respondent is not generally known by the mark, has made no commercial or noncommercial use of the domain names, and therefore, has no rights in the domain name. Policy ¶ 4.c.(i) - (iii). See The Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had no rights or legitimate interests in the domain name). Although Respondent states that he operated a web site for over a year, he has not demonstrated that he is generally known by the mark "Marubeni" or that he has made legitimate commercial or noncommercial use of the Domain Names in question.