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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha MainichiShimbunsha v. Pilyun Kim

Case No. D2001-0307

See Also PDF File: D2001-0307

 

1. The Parties

The Complainantis Kabushiki Kaisha Mainichi Shimbunsha (its English name: The Mainichi Newspapers),a company incorporatedunder the laws of Japan, with its principal place of business at 1-1,

The Respondent is a physical person Pilyun Kim with his contacting address at PunghodongwoosungApt 116-103 Jinhae, Kyungnam 645-320, Korea.

 

2. The Domain Name and Registrar

The domain name in dispute is [<ЛиЖьї·К№.com> (BQ—3BV44ZPFMWYIAXQ.COM)], which is registered with theregistrar Alldomains.com of 2261 Morello Ave Suite C Pleasant Hill, CA 94523,USA.

 

3. Procedural History

The Center received the Complaint of the Complainanton March 2 and 6, 2001 by email and in hard copy respectively.

On March 7, 2001, the Center sent to the Complainantthe acknowledgement of receipt of the Complaint.

The Center sent to the Registrar a request forverification of registration on

March 20, 2001. On April 17, 2001, the Registrarconfirmed that the domain name in dispute is registered with Alldomains.com andthe Respondent is the current registrant of the domain name. The current statusof the disputed domain name is on hold awaiting response from Maincihi toexpedite the transfer of the ownership.

On April 8, 2001, the Center received thecommunication from the Respondent.

The Center completed the formal RequirementsCompliance Checklist on April 17, 2001.

On April 18, 2001, the Center received thecommunication from the Respondent and made the reply accordingly at the sameday.

On April 20, 2001, the Center sent to the Respondentthe Notification of Complaint and Commencement of the AdministrativeProceeding. This notification was sent by the methods required under paragraph2(a) of the Rules. The formal date of the commencement of this administrativeproceeding is April 20, 2001.

The Center received the Response submitted by theRespondent by e-mail on May 9, 2001 and in hard copy on May 14 and 21, 2001.

On May 9 and 10, 2001, the Center sent to the Respondent the acknowledgement ofreceipt of the Response.

On May 22, 2001, after receiving a completed andsigned Statement of Acceptance and Declaration of Impartiality andIndependence, the Center notified the parties of the appointment of asingle-member panel consisting of Mr. Li Yong.

 

4. Factual Background

The Complainant is a Japanese newspaper publishingcompany established in 1872, with its principal office in Tokyo and other mainoffices and branch offices in other cities of Japan as well as some foreigncorrespondents in some cities throughout the world.

The Complainant owns trademark rights over thelogotype ЎИЛиЖьї·К№ЎЙ in Japan. The current versionof the ComplainantЎЗs logotypes ЎИЛиЖьї·К№ЎЙthat appeared on the ComplainantЎЗs newspapers were registered with JapanesePatent Office as ComplainantЎЗs trademarks on June 29, 1994 and on November 30,1994, of which trademark registrations expire on June 29, 2004 and on November30, 2004 respectively. The trademarks above-mentioned are in class 26 of theclassifications of goods and services under Japanese Trademark Law 1959, whichincluded ЎИnewspapersЎЙ and ЎИprinted mattersЎЙ.

The registered trademark of ЎИЛиЖьї·К№ЎЙ consists of four Chinese characters, which means ЎИdaily newspaperЎЙ.

The domain name [<ЛиЖЃE·К№.com> (BQ—3BV44ZPFMWYIAXQ.COM)] was created on November 9, 2000, according to the search result made by the complainant shown in the Annex 1 of the Complaint.

 

5. Parties's Contentions

The ComplainantЎЗs contentions are as follows:

(1) The Complainant publishes and circulates ЎИЛиЖьї·К№ЎЙ (ЎИMainichiShimbunЎЙ) daily newspaper and uses its trademark ЎИЛиЖьї·К№ЎЙ as a logotype on its newspaper that is wellknown among readers as well as its trademark. Thus, the ЎИMainichi ShimbunЎЙ isappreciated as one of the three major daily newspapers with a nationalcirculation throughout Japan together with ЎИAsahi Shimbun (Д«Жьї·К№)ЎЙ and ЎИYomiuri Shimbun (ЖЙЗдї·К№)ЎЙ. The names of these three newspapers arealso famous among Korean people who are familiar with Japan.  In Korea, not only Hangul alphabets astheir own letters, but also Chinese characters are used among Korean people.Therefore, it is not incomprehensible that a Korean who is familiar with thenames of Japanese newspapers plots to prevent Japanese newspaper publishingcompanies from registering corresponding domain names that reflect each companyЎЗstrademark.

(2) The Complainantplans to acquire the multilingual domain name <ЛиЖьї·К№.com> in Kanji characters to reflect itsregistered trademark ЎИЛиЖьї·К№ЎЙ ina corresponding domain name. The Complainant unfortunately failed to acquirethe registration of the planned domain name <ЛиЖьї·К№.com>, though it applied for the domain nameon the first day when it became available in Japan.  The ComplainantЎЗs investigation thereafter revealed that theidentical domain name with what the Complainant planned to acquire had registeredsomehow by the Respondent onNovember 9, 2000.

Moreover, the Complainant confirmed that the Respondent also registered <Д«Жьї·К№.com>, <ЖЙЗдї·К№.com> as well as <»є·Рї·К№.com>, all of which reflect the trademarksof ЎИД«Жьї·К№ (Asahi Shimbun)ЎЙ and ЎИЖЙЗдї·К№ (Yomiuri Shimbun),ЎЙ the two of the three majornewspaper publishing companies as well as another well-known newspaperpublishing company in Japan ЎИ»є·Рї·К№(Sankei Shimbun)ЎЙ on the same date of his/her registration of the disputeddomain name through the same Registrar who handled the registration of thedisputed domain name. The Complainant believes that the Respondent hasintentionally acquired his registrations of the above domain names, includingthe disputed domain name, which are correspondent to trademarks of Japanesemajor newspaper publishing companies so that the Respondent can prevent thesecompanies from registering corresponding domain names that reflect each companyЎЗstrademark.

(3) The Complainantbelieves that, the disputed domain name that is registered by the Respondent isidentical or confusingly similar to registered trademarks in which theComplainant has rights. The Respondent should be considered as having no rightsor legitimate interests in respect of the domain name that is subject of theComplaint, because the Respondent resides in Korea where the Complainant hasnever licensed anybody to use the ComplainantЎЗs registered trademark.Furthermore, the disputed domain name should be considered as having beenregistered in bad faith in order to prevent the owner of the trademark fromreflecting the mark in a corresponding domain name, because (i) the Respondentacquired his registration of the disputed domain name from outside of thecountry where the Complainant is mainly doing business, before it becameavailable by a duly and legitimate procedure in the same country, and (ii) theRespondent acquired three other registrations of domain names that werecorrespondent to trademarks of three other business entities of the sameindustry of the Complainant simultaneously through the same Registrar with theregistration of the disputed domain name.

The RespondentЎЗs contentions are asfollows:

(1)     TheComplainant does not have any legal right for the domain in question. TheChinese word ЎИ每Жьї·К№ЎЙ is pronouncedmaeilshinmun in Korean and it is a combination of very widely used genericwords. Maeil (每Жь) means daily and shinmun means news ornewspapers. Therefore, the Chinese word is translated daily news or dailynewspaper in English. The complainant does not have any of the trademarks ofDaily, DailyNews and DailyNewsPapers in English and also has no claim to theexclusive right of the Chinese Domain (每Жьї·К№.com) translated into DailyNews inEnglish. Almost all of the newspapers in Asia use one of these Chinese characters,maeil (每Жь), maeilshinmun (每Жьї·К№) or ilbo (ЖьКу) which are synonyms in Chinese and means daily news or dailynewspaper. The maeilshinmun (每Жьї·К№) is most widely used. Therefore, maeilshinmun in Chineseis a very widely used, generic word for every newspaper in Korea, China, Japanand so on. The complainant is well aware of this fact and is only trying totake control of this domain for the sole purpose of restricting the business ofsmaller newspaper corporations. On the other hand, there are many maeilshinmun(Daily newspaper) in Korea and in fact one of them has the trademark inKorean.  Also there are many daily newspapersall across China, such as a famous China-daily-news who might have thetrademark. Therefor, it is not acceptable that a local Japanese company shouldhave the only exclusive right for this kind of a generic domain.

(2)     The ComplainantЎЗs trademarkis only a local one, which legally can be applied in Japan and not outside. Infact the Complainant only has ЎИmainichiЎЙ as a USA federal trademark but it doesnot have ЎИmainichishimbunЎЙ as a USA federal trademark. It is widely recognizedthat USA federal trademark is widely and officially recognized as a worldtrademark. And also ЎИ.comЎЙ is commonly used only for worldwide companies or individuals.

(3)     Theofficial name of the complainant is Kabushiki Kaisha Mainichi Shimbunsha. Thedomain in question is not identical or even similar to their company name.Although a company can have many trademarks to protect their business, or toprevent their competitors from using those names or marks, in this case, theComplainant couldnЎЗt insist that they have the legal right of all the identicalor similar domains. This case should be considered as an attempt to act in badfaith or further, a legal attempt at domain hijacking. The complainant only usethe name ЎИmainichiЎЙ for international business with its trademark, not mainichishimbunshain Chinese, referring to their site www.mainichi.co.jp/english.

(4)     TheComplainantЎЗs trademark is not identical to the domain. Different from theEnglish character, Chinese character has a meaning of itself but an English characterdoes not have any meaning of itself. As such, each Chinese character can beused as a word. Therefore each character can be used for various purposes suchas the names of people, businesses, companies, identification and so on. Inorder to combat the confusion, a system of seals was created. Within thissystem, only one seal, where the characters are carved on wood or other hardmaterial, could exist. The owner of the seal is able to identify himself fromothers by stamping the seal on the document when he needs to identify himselfto someone. In this case, the stamped mark is 100% the same as on the document,because there are many people using same Chinese characters in Chineseinfluenced area such as China, Korea, Japan and so on. Every Korean and companyhas at least one or more seal in Chinese to identify himself/herself becausethere are so many of the same names. Therefore, the complaint should be awarethat they do not have any rational background for their insistence that theirseal type trademark is identical to the generic words ЎИmaeilshinmunЎЙ (每Жьї·К№) in Chinese.

(5)     The purpose of adomain is to be used as a IP address for an Internet web siteЎ¤but the complainant does not own and use any of mainichi.com/net/org,any of mainichishimbun.com/net/org, any of mainichishimbunsha.com/net/org, anyof dailynews.com/net/org and any of dailynewspaper.com/net/org as its officialdomain website. 每Жьї·К№ (bq—3bv44zpfmwyiaxq).cc,tv and ws are available to register now. The Complainant has no reason to makeclaim on the disputed domain name. There are many ЎИ每Жьї·К№ЎЙ in Japan such as ЎИї®З»每Жьї·К№ЎЙ, ЎИ宫ёЕ每Жьї·К№ЎЙ, ЎИИ¬ЅЕ»і每Жьї·К№ЎЙ, ЎИИ¬ЅЕ»і每Жьї·К№јТЎЙand so on. It is impossible that they all infringe the trademarkof the Complainant. This shows that the complainant should not have anyexclusive right for the domain <每Жьї·К№.com> because it is widely used across the world andeven in Japan by several news paper cooperation. This generic domain at hand willnot bring any loss of business activity to them. The Respondent also shouldsuppose that the Complainant will not use this domain as their official domainfor their site because it is widely known that most of Japanese companies usetheir own countries domain (.co.jp) and also they are able to obtain and usethe multilingual-Japanese domain.co.jp.

With these proofs uncovered and known to all, the complainantobviously has no right to insist that they have any right for this domain andtheir plot to snatch this generic domain from a weaker party should bedismissed.

(6)     Theregistration by the Respondent of other Chinese domain names does not show theRespondentЎЗs bad faith, because there are hundreds of initials and differentmeanings in each Chinese character and also each Chinese character has its ownmeaning. Therefore, there are many same names used for different purposes inChinese culturally influenced areas. The Respondent plans to use his domainnames for promoting the public interest activities. The Respondent has not beenable to use this domain for the planned website because ITEF has not yetapproved the multilingual domains to be an official family member of gTDLs. Andtherefore, anyone who has any multilingual domains can not use any multilingualdomains for a website yet.

 

6 Discussion and Findings

In accordance with the Policy, the Complainantasking for transfer of the domain name must prove the following three elements:1) Respondent's domain name is identical or confusingly similar to a trademarkor service mark in which the Complainant has rights; 2) Respondent has norights or legitimate interests in the domain name; and 3) Respondent hasregistered the domain name and is using it in bad faith. (ICANN Policy, 4 (a)).

Identical or Confusingly Similar

The domain name at issue is [<ЛиЖьї·К№.com> (BQ—3BV44ZPFMWYIAXQ.COM)]. The Panel finds that the charactersof this domain name ЎИЛиЖьї·К№ЎЙ is completely identicalwith the registered trademarks held by the Complainant in Japan. The top leveldomain designator ".com" is only a necessary portion to form abusiness-related domain name and cannot function to distinguish that name fromthe ComplainantЎЗs trademarks. When deciding whether the disputed domain name isidentical or confusingly similar to a trademark, the key point is to comparethe second level of the disputed domain name with the substantial part of thetrademark. The panel has noticed the RespondentЎЗs contention that the ComplainantЎЗs trademark is only a local one, which legallycan be applied in Japan and not outside. The panel does not support thiscontention based on the following reasons: firstly, ICANN Policy doesnot require any complainants to own ЎИinternational trademark rightЎЙ ortrademark right of any particular country in order for them to make claims; andsecondly, the disputed domain name <ЛиЖьї·К№.com>is a multilingual domain name, it can be regarded as a Chinese domain name anda Japanese domain name as well because Chinese characters in traditional formare frequently used in Japan. Keeping the above in mind, the Panel believesthat the first element of the ICANN Policy, 4(a) is met.

RespondentЎЗs Rights or Legitimate Interests in the DomainName

The Respondent has not provided evidence ofcircumstances of the type specified in the ICANN Policy, 4(c). There exists noevidence that the Respondent, before receipt any notice of the dispute, hasused the domain name or a name corresponding to the domain name in connectionwith bona fide; or that the Respondent has been commonly known by the domainname; or that the Respondent is making a legitimate noncommercial or fair useof the domain name. Furthermore, the Respondent has not provided evidence ofany other circumstances giving rise to a right or legitimate interest in thedisputed domain name, though he said he planned to use the disputed domain nameto promote the public interest activities. On the other hand, the Complainantclearly declared that he has never licensed anybody to use his registeredtrademarks. As such, the Panel believes that the Respondent has no rights orlegitimate interests with respect to the disputed domain name.

Domain Name Registered and Used in Bad Faith

Paragraph 4(b) of the ICANN Policy specifies fourtypes of circumstances that could be evidence of the registration and use of adomain name in bad faith. According to the ICANN Policy, circumstances of badfaith are not limited to the listed ones.

The Panel finds that the domain name was registeredand used in bad faith based upon the following reasons:

The Complainant has trademark registrations for theChinese words ЎИЛиЖьї·К№ЎЙ in Japan and has begun touse the trademarks in Japan before the creation of the disputed domain name. ЎИЛиЖьї·К№ЎЙ (Mainichi Shimbun), together with ЎИД«Жьї·К№ЎЙ (Asahi Shimbun) and ЎИЖЙЗдї·К№ЎЙ (Yomiuri Shimbun), are appreciated as thethree major daily newspapers with a national circulation throughout Japan. Thesethree newspapers, to some extent, are also famous in many foreign countries,especially in the JapanЎЗs neighboring countries or regions. Besides the domainname at issue, the Respondent also registered simultaneously <Д«Жьї·К№.com>, <ЖЙЗдї·К№.com> as well as <»є·Рї·К№.com>, all of which are the three famousnewspaper publishing companies in Japan. The Panel infers from the RespondentЎЗsbehavior that, when making the registration applications, the Respondentclearly knew that ЎИЛиЖьї·К№ЎЙ was one of the majorJapanese newspapers. The Chinese character of the disputed domain name isidentical to the trademarks ЎИЛиЖьї·К№ЎЙ owned by the Complainant. Bycommon knowledge, using the Chinese wording ЎИЛиЖьї·К№ЎЙ as the second level of a domain name can be a very direct, exact andpreferred way to reflect the ComplainantЎЗs identity, functions and servicesoffered by the Complainant. In absence of proof that the Respondent possessesthe rights or other legitimate interests in the domain name in dispute, the Panelbelieves that the RespondentЎЗs conduct of acquiring and holding the domain name[<ЛиЖьї·К№.com> (BQ—3BV44ZPFMWYIAXQ.COM)] hasprevented the Complainant from reflecting its trademark in a corresponding Chinesedomain name. In addition, the situation that names for four famous Japanese newspaperswere registered as multilingual domain names by the same Respondent is regardedby the Panel as a fact of bad faith.

For the reasons above, the Panel finds that theRespondentЎЗs registration and use of the domain name at issue is in bad faith.

 

7. Decision

The Panel concludes (a) that the domain name [<ЛиЖьї·К№.com> (BQ—3BV44ZPFMWYIAXQ.COM)] is identical to the trademarks ownedby the Complainant, (b) that the Respondent has no rights or legitimateinterest in the domain name and (c) that the Respondent has registered and usedthe domain name in bad faith. Therefore, the Panel orders that the domain name[<ЛиЖьї·К№.com> (BQ—3BV44ZPFMWYIAXQ.COM)] betransferred to the Complainant.

 


 

Li Yong
Sole Panelist

Dated: June 5, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-0307.html

 

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