Orix Kabushiki Kaisha v Mark Anderson

WIPO Case No. D2024-2826

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ORIX Kabushiki Kaisha v. Mark Anderson

Case No. D2024-2826

1. The Parties

Complainant is ORIX Kabushiki Kaisha, Japan, represented by Saegusa & Partners, Japan.

Respondent is Mark Anderson, United States of America.

2. The Domain Name and Registrar

The disputed domain name <orix-777.com> (the “Domain Name”) is registered with Name.com, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2024. On July 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Non-Public Data) and contact information in the Complaint. The Center sent an email communication to Complainant on July 12, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 16, 2024.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2024. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on August 8, 2024.

The Center appointed Marina Perraki as the sole panelist in this matter on August 12, 2024. 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.

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4. Factual Background

Complainant is a financial services company seated in Japan with an established worldwide service network, providing its services under the ORIX mark.

Complainant owns numerous trademark registrations for ORIX, including the Japanese trademark registration no. 4142119, ORIX (word), registered on May 1, 1998, for services in international class 36.

Complainant and its group companies are also the owners of domain name registrations incorporating the
ORIX mark, including <orix.co.jp>; <orix.com>; <orix.net>.

Since April 1, 1989, Complainant has changed its legal name to ORIX Kabushiki Kaisha (ORIX Corporation in English). Complainant’s group has been using the ORIX brand as a corporate name and trademark for the group’s companies and activities.

Complainant is active in leasing and other various fields, mainly in financial areas, such as lending, rentals, life insurance, real estate financing and development, venture capital, investment and retail banking, commodities funds, and securities brokering. Recently, it has become active in the field of casinos, as a major investor, and has received, per Complaint, frequent media coverage.

Complainant’s group has a total revenue of 2,663,659 million yen in fiscal year 2023 and over 33,000 employees. As of the date of filing of the Complaint, Complainant has 41 group companies in Japan, and 36 in 30 countries or areas. Complainant was selected as one of “The World’s Leading 2000 Companies,” where it was ranked 371st in the 2023 Ranking.

Furthermore, Complainant owns the Orix Buffaloes, a professional baseball team belonging to Nippon

Professional Baseball (NPB), and uses (the “Complainant’s logo”) as the team emblem.

The Domain Name was registered on December 24, 2023, and at the time of filing of the Complaint led to a website (the “Website”) where casino related services appeared to be provided. The Website also included

a logo that is very similar to Complainant’s logo for its baseball team, while the text part of the logo

includes “오릭스” which was the Hangeul (Korean script) for “ORIX”. The Domain Name currently leads to

an inactive page.

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

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(iii)      the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other term here, “777” may bear on assessment of the second and third elements,
the Panel finds the addition of such term does not prevent a finding of confusing similarity between the

Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the
comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v.
Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,

WIPO Case No. D2002-0122; see also WIPO Overview 3.0, section 1.11.1).

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. On the contrary Respondent has been using the Domain Name for a website in order to create a false impression that Respondent is affiliated with Complainant, see further discussions under 6.C.

Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted

Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the
ORIX mark had been widely used and registered by Complainant at the time of the Domain Name
registration and enjoyed reputation as repeatedly recognized (e.g. ORIX Kabushiki Kaisha v. Proxy
Protection LLC / Imdad Hussain, Technifist Limited, WIPO Case No. D2021-2631), the Panel finds it more
likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor
Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd
/ Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754).

As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name has been used to resolve to the Website for apparent casino services, which has prominently displayed a logo that is very similar to Complainant’s logo for its baseball team, while the text part of the logo has included “오릭스” which is the Hangeul (Korean script) for “ORIX”, thereby giving the false impression that it is

operated by Complainant, or a company affiliated to Complainant or an authorised dealer of Complainant.
The Domain Name has therefore been used to intentionally create a likelihood of confusion with
Complainant’s trademark and business as to the source, sponsorship, affiliation, or endorsement, for
commercial gain. This can be used in support of bad faith registration and use (Booking.com BV v. Chen
Guo Long, WIPO Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No.
D2017-0001; and WIPO Overview 3.0, section 3.1.4).

Panels have held that the use of a domain name for illegal activity, here, claimed impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the Domain Name constitutes bad faith under the

Policy.

The Panel finds that Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <orix-777.com> be transferred to Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: August 26, 2024