Ricoh Company, Ltd. v Seemab Rasheed, Golden Class General Trading

WIPO Case No. DAE2024-0011

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Ricoh Company, Ltd. v. Seemab Rasheed, Golden Class General Trading
Co. L.L.C.

Case No. DAE2024-0011

1. The Parties

The Complainant is Ricoh Company, Ltd., of Japan, represented by Rodenbaugh Law, United States of

America (“United States”).

The Respondent is Seemab Rasheed, Golden Class General Trading Co. L.L.C., United Arab Emirates

(“UAE”).

2. The Domain Name and Registrar

The disputed domain name <ricoh.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2024. On verification in connection with the disputed domain name. On May 29, 2024, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute
Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name
Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name

Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on June 4, 2024. In accordance with the Rules, paragraph
5(a), the due date for Response was June 24, 2024. The Respondent did not submit any Response.

Accordingly, the Center notified the Respondent’s default on July 4, 2024.

The Center appointed Alistair Payne as the sole panelist in this matter on July 15, 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

The Complainant is a Japanese multinational imaging and electronics company, offering a full range of technology products, solutions, and services for commercial and personal use which employs over 100,000 people worldwide and provides products and services around the globe. The Complainant owns various trade mark registrations for its RICOH mark around the world including United States trade mark registration 657420 registered on January 21, 1958 and UAE trade mark registration 082209 registered on June 11, 2007.

The disputed domain name was registered on January 24, 2024. The disputed domain name resolves to a
website which uses the RICOH trade mark and appears as if it has been authorised by the Complainant.

The Respondent is a company that specialises in IT related products and solutions.

5. Parties’ Contentions

A. Complainant

The Complainant submits that its RICOH mark is fully incorporated into the disputed domain name and that the disputed domain name is therefore identical or confusingly similar to its registered RICOH mark.

The Complainant says that it is clear that Respondent has no rights or legitimate interests in the disputed domain name. It says that the Respondent not only registered the disputed domain name many decades after the registration of the Complainant’s trade mark and is using the disputed domain name to attract

Internet users to a website that is designed to mislead Internet users into believing that it is managed by the
Complainant.

It further says that the use of the disputed domain name that is confusingly similar to the Complainant’s mark to operate a website that is imitating the Complainant’s official website and which is using the Complainant’s trade mark in a prominent manner for commercial purposes, without previous consent or authorisation,

cannot be considered a bona fide offering of goods and services. It notes also that there is no evidence that
the Respondent is commonly known by the disputed domain name and that the publicly available WhoIs
record does not provide any information that would suggest that the Respondent is known by the disputed
domain name as the Respondent’s contact information refers to a company named “Golden Class General
Trading Co. L.L.C”.

The Complainant also asserts that the use of the disputed domain name in a way that could easily mislead considered as a legitimate or noncommercial fair use. It notes that the Respondent is using the pronouns “we” or “our” to refer to the Complainant and to misrepresent itself as “Ricoh” or “the Ricoh group” in many parts of the website to which the disputed domain name resolves.

As far as registration in bad faith is concerned, the Complainant notes that its trade mark use rights date back to 1946 and that its registration in the United States dates from 1958 and in the UAE from 2007. Since that time, the Complainant notes that it has expended substantial amounts of time and effort to ensure that consumers associate the RICOH trade mark with its company and its products and services and as a result of such efforts, the RICOH mark has achieved international fame. It notes that the disputed domain name was not created until over sixty years after the Complainant’s trade mark rights were first registered and that it is identical or confusingly similar to the Complainant’s trade mark. The Complainant says therefore that it is inconceivable to imagine that the Respondent was unaware of the Complainant’s rights when it registered the disputed domain name.

The Complainant asserts that the Respondent’s use of the disputed domain name to resolve to a website that uses the Complainant trademark in a prominent manner and tries to pass itself off as a website managed by the Complainant, creates a likelihood of confusion for Internet users. It says that the

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Respondent registered the disputed domain name in an obvious effort to confuse consumers and divert Internet traffic away from the Complainant’s website for the Respondent’s own commercial gain. It says that the Respondent only stands to profit from the confusion of Internet users looking for the Complainant’s website and that such confusion is likely because consumers have commonly come to know and associate the Complainant with the Complainant’s mark and brand as a result of longstanding use.

The Complainant also asserts that the Respondent is using the disputed domain name to disrupt the

Complainant’s business for the Respondent’s own financial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered rights in its RICOH trade mark as noted above.
The disputed domain name wholly incorporates the Complainant’s trade mark and is therefore identical to it.

Accordingly, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the disputed domain name is identical to the Complainant’s mark and using to it for a website that imitates the Complainant’s official website and which features the Complainant’s trade mark in a prominent manner for its own commercial purposes, without the Complainant’s prior consent or authorisation, cannot amount to a bona fide offering of goods and services. The Complainant has also noted that there is no evidence that the Respondent is commonly known by the disputed domain name and that the publicly available WhoIs record does not provide any information that would suggest that the Respondent is known by the disputed domain name as the Respondent’s contact information refers to a company named “Golden Class General Trading Co. L.L.C”.

The Complainant has also asserted that the use of the disputed domain name in a way that could easily mislead Internet users into believing that they are using a website owned and operated by the Complainant cannot be considered as a legitimate or noncommercial fair use. The Complainant has noted that the Respondent is using the pronouns “we” or “our” on the website to which the disputed domain name resolves as if it is the Complainant and the use of the name or marks “Ricoh” or “the Ricoh group” only compounds this misrepresentation and the potential to confuse Internet users.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy, or otherwise and therefore the Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered or is Being Used in Bad Faith

The Complainant’s trade mark use dates back to 1946 and the Panel notes that its registration in the United States dates from 1958 and in the United Arab Emirates from 2007. The Complainant has submitted that it has expended substantial amounts of time and effort to ensure that consumers associate the RICOH trade mark with its company and its products and services and as a result of such efforts, the RICOH mark enjoys

a considerable degree of reputation internationally. The disputed domain name was registered many
decades after the Complainant first registered its trade mark rights and considering the degree of renown

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attaching to the RICOH mark and that the website to which the disputed domain name resolves features the registered the disputed domain name.

There is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship,

affiliation or endorsement of the website.

Internet users seeing the disputed domain name would naturally expect to be directed to a site authorised by or affiliated with the Complainant. They may very well be confused into thinking that they are arriving at the Complainant’s or its authorised local agent’s or re-sellers site in the United Arab Emirates but instead they are diverted to the Respondent’s website and their confusion will only be heightened when they see the use of the RICOH mark on the website to which the disputed domain name resolves and the text written as if it is a website belonging to the Complainant. It appears to the Panel that the Respondent operates in a similar field of activity, namely IT services and products and is using the disputed domain name for its own commercial purposes to redirect Internet users to its website. The Panel finds that this amounts to confusing Internet users as to the source, sponsorship, affiliation, or endorsement of the website which is evidence of registration and use in bad faith.

The Panel finds that the Complainant has established that the disputed domain name has both been registered and used in bad faith in terms of the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ricoh.ae> be transferred to the Complainant.

/Alistair Payne/
Alistair Payne
Panelist
Date: July 29, 2024