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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kabushiki KaishaSangyokeizai Shimbunsha v. Jg Kim

Case No. D2001-0620

See Also PDF File: D2001-0620

 

1. The Parties

The Complainant is Kabushiki Kaisha Sangyokeizai Shimbunsha (its English name:Sankei Shimbun Co., Ltd.), a company incorporated under the laws of Japan, withits principal place of business at 7-2, Otemachi 1-chome, Chiyoda-ku Tokyo,100-8077, Japan.

The Respondent is a physical person Jg Kim with his contactingaddress at Yangduck2dong Hyundai Apt 401 Masan, Kyungnam 645-492, Korea.

 

2. The Domain Name and Registrar

The domain name in disputeis [<Я§経гжЪ¤.com>(bq--3b2sg7kmmwyiaxq.com)], which is registered with the registrar Alldomains.comof 2261 Morello Ave Suite C Pleasant Hill, CA 94523, USA.

 

3. Procedural History

The Center received the Complaint of the Complainanton May 1 and 3, 2001, by email and in hard copy respectively, and received theAmendment to the Complaint by email and in hard copy on May 1 and June 11, 2001.

On May 2, 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 May 3 and 31, 2001.  On June 1, 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 active.

On May 24, 2001, the Center received the report onnon-delivery of the Compliant from Complainant.

On May 29 and 30, 2001, the Center received thecommunications from the Respondent and made the replies accordingly. And theCenter received the communication from the Complainant and the Respondentrespectively on May 31 and June 1, 2001, and made its corresponding replies.

The Center completed the formal RequirementsCompliance Checklist on June 2, 2001.

On June 13, 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 June 13, 2001.

On June 20 and 21, 2001, The Center received thecommunications from the Respondent and made the replies accordingly.

The Center received the Response submitted by theRespondent by e-mail on July 3, 2001, and in hard copy on July 9, 2001.

On July 3, 2001, the Center sent to the Respondent the acknowledgementof receipt of the Response.

On July 3, 6and 9, there are some communications between the Center and the Respondent.

On July 11, 2001, afterreceiving a completed and signed Statement of Acceptance and Declaration ofImpartiality and Independence, the Center notified the parties of theappointment of a single-member panel consisting of Mr. Li Yong and theprojected decision date.

 

4. FactualBackground

The Complainant is a Japanese newspaper publishingcompany established in 1942, with its principal office in Tokyo, the mainoffices in Osaka and some foreign correspondents in some cities throughout theworld.

The Complainant owns trademark rights over thelogotype Ў°Я§経гжЪ¤Ў± in Japan. Thecurrent version of the ComplainantЎЇs logotype Ў°Я§経гжЪ¤Ў± that appeared on the ComplainantЎЇs newspapers wereregistered with Japanese Patent Office as ComplainantЎЇs trademark on February 8, 1957, andon July 30,1990, ofwhich trademark registration expire on February 8, 2007 and on July 30,2010 respectively.The trademark above-mentioned is in classes 66 and 26 of the classifications ofgoods and services under Japanese Trademark Law 1959, which included Ў° newspaperЎ±.

The registered trademark of Ў°Я§経гжЪ¤ consists of four Chinesecharacters.

The domain name  [<Я§経гжЪ¤.com>(bq--3b2sg7kmmwyiaxq.com)] was created on November 9, 2000, according to thesearch result made by the complainant shown in the Annex 1 of the Complaint.

 

5. PartiesЎЇContentions

The ComplainantЎЇs contentions are as follows:

(1) The Complainant publishes and circulatesЎ°Я§経гжЪ¤Ў±(Ў°Sankei ShimbunЎ±) daily newspapereveryday for about two million readers in Japan and uses its trademark Ў°Я§経гжЪ¤Ў± as a logotype on itsnewspaper which is well knownamong readers as well as its trademark. The Ў°Я§経гжЪ¤Ў± is appreciated as one of major daily newspapers with a nationalcirculation throughout Japan together with Ў°Asahi Shimbun (рИмнгжЪ¤),Ў± Ў°Yomiuri Shimbun (読売гжЪ¤),Ў± and Ў°Mainichi Shimbun (毎мнгжЪ¤).Ў± The names of Japanese major newspapers,especially ComplainantЎЇs newspaper, are also famous in Korea, not only amongthe intelligentsia but also among ordinary office workers, students andhousewives through Korean mass mediaЎЇs news reports with regard to news reportsin Ў°Sankei ShimbunЎ±. Moreover, the Complainant associates with aKorean newspaper publishing company the Kyung Hyang Shinmun to provide news in relation to Japan. In Korea, both Hangul alphabets and Chinesecharacters are used among Korean people. Some educated or aged Koreans can even read Japanese documents that include Chinese characters as well as Hiragana and Katakanaletters of Japanese origin. Therefore, it is not incomprehensible that a Koreanwho is familiar with the names of Japanese newspapers plots to prevent Japanesenewspaper publishing companies from registering corresponding domain names thatreflect each companyЎЇs trademark.

(2) The Complainant plans to acquire themultilingual domain name <Я§経гжЪ¤.com> in Chinese characters to reflect its registered trademark Ў°Я§経гжЪ¤Ў± in a corresponding domain name. TheComplainant unfortunately failed to acquire the registration of the planneddomain name <Я§経гжЪ¤.com> though it applied forthe domain name on the first day when it became available in Japan. TheComplainantЎЇs investigation thereafter revealed that the identical domain namewith what the Complainant planned to acquire had been registered somehow by a person named Pilyun Kimwho resides in Korea on November 9, 2000, before the domain name becameavailable by a duly and legitimate procedure in Japan. Pilyun Kim also registered <рИмнгжЪ¤.com>, <読売гжЪ¤.com> and <毎мнгжЪ¤.com>, all of which reflect the trademarks of Ў°рИмнгжЪ¤ (Asahi Shimbun)Ў±, Ў°読売гжЪ¤ (Yomiuri Shimbun)Ў± and Ў°毎мнгжЪ¤ (Mainichi Shimbun)Ў± thatare three major newspaper publishing companies in Japan on the same date ofhis/her registration of the disputed domain name through the sameRegistrar.

It is quite clear that Pilyun Kim intentionally acquired his/her registrations ofthe disputed domain name and some other domain names that are correspondent towell-known trademarks of Japanese major newspaper publishing companies in orderto warehouse those domain names without any specific rights or interests inthem. This indicates Pilyun KimЎЇspattern of conduct aimed at preventing trademark owners, including theComplainant, from registering corresponding domain names that reflect eachcompanyЎЇs trademark.

(3) The Respondent in this case is not Pilyun Kimwho originally acquired the registration of the disputed domain name. However, the disputed domain name that is currently registered by the Respondent isexactly identical to the registeredtrademark in which the Complainant has rights. The Respondent should be considered as having no rights or legitimateinterests in respect of the domain name that is subject of the Complaint,because the Respondent resides in Korea where the Complainant has never licensedanybody to use the ComplainantЎЇs registered trademark. Moreover, the disputed domain name has never been usedfor five months since it was registered by Pilyun Kim, which shows that neitherPilyun Kim nor the Respondent has need to use and register the disputed domainname.

The Respondent succeeded to the registrant of the disputed domain name from Pilyun Kim by March 7, 2001, after Pilyun KimЎЇs receipt of the copy of a Complaint that was filed with WIPOЎЇs arbitration and mediation center by Kabushiki Kaisha Mainichi Shimbunsha (English name: The Mainichi Newspapers, hereinafter Ў°MainichiЎ±) that claimed for transferring <毎мнгжЪ¤.com> that reflects its registered trademarks from Pilyun Kim. In the Complaint for the pending case between Mainichi and Pilyun Kim (case number: D2001-0307), Mainichi argues that, the simultaneous registration of four domain names that all reflect the trademarks of Japanese major companies in the same industry (newspaper publishing) by Pilyun Kim clearly shows Pilyun KimЎЇs intention with bad faith to prevent the legitimate trademark holders from registering domain names that reflect their respective trademarks.  Therefore, the Complainant believes that by March 7, 2001 when the Respondent succeeded to the registrant of the disputed domain name herein from Pilyun Kim, the Respondent and Pilyun Kim had recognized that the registration of <毎мнгжЪ¤.com> could be transferred to Mainichi by an Administrative PanelЎЇs decision; and the disputed domain name could be also transferred to the holder of the registered trademark corresponding to <Я§経гжЪ¤.com> when the trademark holder would file a Complaint with a dispute-resolution service provider approved by ICANN. Consequently, it is quite likely that the Respondent is another cyber squatter who conspires with Pilyun Kim, or a nominal party who substantially helps a true cyber squatter behind to camouflage the Respondent has a legitimate interests in respect of the disputed domain name.  It also supports the above that Pilyun Kim had never used the disputed domain name for four months after his/her registration. However, by March 8, 2001, immediately after s/he received a copy of the Complaint for the case with regard to <毎мнгжЪ¤.com> from Mainichi, s/he also transferred two other registered domain names (<рИмнгжЪ¤.com> and <読売гжЪ¤.com>) to two different persons. 

It can be inferred from theRespondentЎЇs succession of the disputed domain name from a registrant who apparentlyacquired the registration with bad faith that the Respondent has no rights or legitimate interests in respect of thedisputed domain name which has been registered by the Respondent in bad faith.

The RespondentЎЇs contentions are asfollows:

(1) The disputed domain name <Я§経гжЪ¤.com> consists of four Chinesecharacters, among which, Ў°гжЪ¤Ў± meansnews/newspapers and Ў°Я§経Ў± means the industry and economy. Every news / news paper company in Chineseaffected countries uses Ў°гжЪ¤Ў± after their company names. Ў°Я§経Ў± is also the widely used initialized generic word which anyone cannotclaims to have an exclusive right of it.

(2) The complainant said he uses its trademark Ў°Я§経гжЪ¤Ў± as a logotype on its newspaper which is well known among readers as well as its trademark. TheRespondent has neverseen the ComplainantЎЇs trademark and can not acceptthat the graphical type of their trade mark is not only identical and but also similarto the domain name <Я§経гжЪ¤.com>.

The complainant said Ў°Я§経гжЪ¤Ў±(Sankei Shimbun)is appreciated as one of major daily newspapers with a national circulation throughoutJapan together. The Respondentnever read the ComplainantЎЇs newspapersand does not know that it is a major one ornot. The Respondent hasnever heard that thecomplainant is famous in Korean and even neverseen the complainantЎЇs newspapers in Korea, andalso never met any guy to read the papernot only in Korea but also outside of Japan. Inthe site of TheKyung Hyang Shinmun, there is no notice that The Kyung Hyang Shinmun hasany relationship with the Japanese complainants.

(3) The Respondent has ordered and made the payment to Pilyun Kim whotold the Respondent that he had an account for pre-registration formultilingual domain names at Alldomains.com.Since the RespondentЎЇs ordereddomain <Я§経гжЪ¤.com> wassuccessfully registered, the Respondenthave asked many times totransfer this domain to a Korean registrar, butPilyun Kimexplained to the Respondent that the domainstransfer between registrars have not been approved by Verisign, and he could not transfer this domain to the Respondent. That is the reason why the disputeddomain name is still on the Alldomains.comЎЇsserve. Though the Respondent does notlike to think that in thecase he willbe defeated, but, if ithappens, the Respondent have made the notice to Pilyun Kimthat he will make a big claim to him.

(4) The disputed domain name is surely not identical to the ComplainantЎЇs registered trademark and even not similar to its roughlygraphicrized or painted mark. The complainantЎЇscompany is a Japanese local company and the right they insisted should belimited in Japan. The complainant cannot insist their claims inKorea because they do not have any legal right in Korea. The Chinese wording of the disputed domain name <Я§経гжЪ¤> is very widely used generic initials in Korea, Chinese,Japanese and Chinese culturally affected countries, no one cannot insist that the Respondent should not have the right over the wording. Up to now, noone can use the multilingual domain name as an official Internet address. Onlyfor some testing purposes, they can be used a forwarded one.

(5) Based on the domain name <Я§経гжЪ¤.com> was not registered or acquiredprimarily for the purpose of selling, renting, or otherwise transferring thedomain name registration to the Complainant, as the alleged owner of thetrademark or service mark, or to a competitor of Complainant, for valuableconsideration in excess of the RespondentЎЇs out-of-pocket costs directlyrelated to the domain name, the Respondent  has never tried to sell this domain not onlyto the complainant but also anybody in the world because the Respondent planed and plans for the use of his business purpose. The domain name was not registered in order to preventComplainant from reflecting his mark in a corresponding domain name and, inconnection therewith, the Respondent has not engaged in a pattern of such conduct. The Respondent did not register the domainname in an intentional attempt to attract for commercial gain. The Respondent has never done any harmful activities to make the complainantto lose any profits. And also the complainant could not show what they lostfrom theRespondentЎЇs havingthis domain. The Respondentis making a legitimate non-commercial or fair use of the domain name, withoutintent for commercial gain misleadingly to divert consumers or to tarnish thetrademark(s) or service mark(s) at issue. This domain name will be used written in Korean and Chinese Language, and the complainantЎЇs customers using Japanese windows will not beconfused.

 

6. Discussionand 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  [<Я§経гжЪ¤.com>(bq--3b2sg7kmmwyiaxq.com)]. The Panel finds that the characters of this domainname Ў°Я§経гжЪ¤Ў± are confusingly similar tothe registered trademark held by the Complainant in Japan. It is true that thecharacters of the disputed domain name are slightly different in shape with thecharacters of the trademark of the Complainant, which has been pointed out bythe Respondent in his response. However, the panel finds that the difference isnot significant. From Chinese usersЎЇ point of view, the two words have justsame meaning and same pronunciation. In fact, they are interchangeable. Inaddition, the panel does not agree with the RespondentЎЇs contention that Ў°Я§経Ў± is  widely usedinitialized generic word which anyone cannot claims to have an exclusive rightof it. The word Ў°Я§経гжЪ¤Ў±is a coined wordrather than a generic one. Therefore the Complainant have exclusive right onit. The panelhas noticed the RespondentЎЇs contention that the complainantЎЇscompany is a Japanese local company and the right they insisted should belimited in Japan. The complainant cannot insist their claims inKorea because they do not have any legal right in Korea. Thepanel does not support this contention because ICANN Policy does notrequire any complainants to own Ў°international trademark rightЎ± or trademarkright of any particular country in order for them to make claims based on thePolicy. Keeping the above in mind, the Panel believes that the first element ofthe ICANN Policy, 4(a) is met.

RespondentЎЇs Rights orLegitimate Interests in the Domain Name

The Respondent has notprovided evidence of circumstances of the type specified in the ICANN Policy,4(c). There exists no evidence that the Respondent, before receipt any noticeof the dispute, has used the domain name or a name corresponding to the domainname in connection with bona fide; or that the Respondent has been commonlyknown by the domain name; or that the Respondent is making a legitimatenoncommercial or fair use of the domain name. Furthermore, the Respondent hasnot provided evidence of any other circumstances giving rise to a right orlegitimate interest in the disputed domain name. On the other hand, theComplainant clearly declared that he has never licensed anybody to use hisregistered trademarks in Korea. As such, the Panel believes that the Respondenthas no rights or legitimate interests with respect to the disputed domain name.

Domain Name Registered andUsed in Bad Faith

Paragraph 4(b) of the ICANNPolicy specifies four types of circumstances that could be evidence of theregistration and use of a domain name in bad faith. According to the ICANNPolicy, circumstances of bad faith 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 registration for theChinese words Ў°Я§経гжЪ¤Ў± in Japan and has begun to use the trademarkin Japan before the creation of the disputed domain name. Ў°Я§経гжЪ¤Ў± (SankeiShimbun), together with Ў°毎мнгжЪ¤Ў± (MainichiShimbun), Ў°рИмнгжЪ¤Ў± (AsahiShimbun) and Ў°読売гжЪ¤Ў± (YomiuriShimbun), are appreciated as the four major daily newspapers with a nationalcirculation throughout Japan. These newspapers, to some extent, are also famousin many foreign countries, especially in the JapanЎЇs neighboring countries orregions. Besides the domain name at issue, the former registrant of the disputed domain name Pilyun Kimalso registered simultaneously <рИмнгжЪ¤.com>,<読売гжЪ¤.com>as well as <毎мнгжЪ¤.com>,all of which are the three famous newspaper publishing companies in Japan. ThePanel infers from PilyunKimЎЇs behavior that, when making the registrationapplications, heclearly knew that Ў°Я§経гжЪ¤Ў± wasone of the major Japanese newspapers and further believes that Pilyun Kimregistered and used the disputed domain name in bad faith.

The Respondent claimed that he obtained the disputeddomain name from Pilyun Kim by transfer. However, it is a common sense that, justlike the transfer of other kinds of intellectual properties, when getting thedomain name by transfer from others, the transferee has been under the risksthat his right over the domain name may be of a non-stable nature. The subjectmatter of the transfer (the disputed domain name) may probably infringe uponthe legitimate rights of others. The Respondent should have known this and takethe corresponding responsibility arising from the transfer. Moreover, theRespondent could not furnish evidence to prove that he acquired and held thedisputed domain name by good reasons. Considering the influence of thenewspaper Ў°Я§経гжЪ¤Ў± inJapan and its neighboring countries, it is inferred that the Respondent knewthe name of the newspaper company. The Chinese characters of the disputeddomain name are confusingly similar to the trademarks Ў°Я§経гжЪ¤Ў± owned by the Complainant. Bycommon knowledge, using the Chinese wording Ў°Я§経гжЪ¤Ў± as the second level of adomain name can be a very direct, exact and preferred way to reflect theComplainantЎЇs identity, functions and services offered by the Complainant. Inabsence of proof that the Respondent possesses the rights or other legitimateinterests in the domain name in dispute, the Panel believes that the RespondentЎЇsconduct of acquiring and holding the domain name [<Я§経гжЪ¤.com>(<bq--3b2sg7kmmwyiaxq.com>)] has prevented the Complainant from reflectingits trademark in a corresponding Chinese domain name.

For the reasons above, the Panelfinds that the registration and use of the domain name at issue is in badfaith.

 

7. Decision

The Panel concludes (a) thatthe domain name [<Я§経гжЪ¤.com>(<bq--3b2sg7kmmwyiaxq.com>)] is identical to the trademark owned by theComplainant, (b) that the Respondent has no rights or legitimate interestin the domain name and (c) that the domain name at issue has registered andused in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15of the Rules, the Panel orders that the domain name [<Я§経гжЪ¤.com>(<bq--3b2sg7kmmwyiaxq.com>)] be transferred to the Complainant.

 


 

Li Yong
Sole Panelist

Dated:  July 25, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-0620.html

 

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