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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America Inc. v. Enic. net, Ename and Kim Taeho
Case No. D2001-1369
1. The Parties
The Complainant is Nintendo of America Inc., a Washington corporation with its principal place of business at Redmond, Washington, U.S.A. The Complainant is represented by Mr. James R. McCullagh of Perkins Coie LLP. of Seattle, Washington, U.S.A.
According to the Response, the Respondent is Mr. Kim Taeho of 101-1213 Dok Lim Jeil Park, 284 Wolsan Dong Namku Gwangsu, Republic of Korea. The Respondent is represented by Mr. Zak Muscovitch, Barrister & Solicitor of Neinstein & Associates, Toronto, Ontario, Canada. According to a WHOIS search by the Complainant, Kim Taeho as well as Enic.net and Ename were registered as owners of the disputed domain name.
2. The Domain Name and Registrar
The domain name at issue is <pichu.com>. The domain name is registered with OnlineNIC, Inc. of San Franciso, CA, U.S.A. ("the Registrar"). The domain name was registered on November 15, 1999.
3. Procedural History
The Complaint submitted by Nintendo of America Inc., was received on November 18, 2001 (electronic version) and November 20, 2001 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). An Amended Complaint was filed on December 4, 2001 (electronic) and December 7, 2001 (hard copy).
On November 23, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by Paragraph 4(b) of WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
Confirm that the domain name at issue is registered with OnlineNIC.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address (es), telephone number(s), facsimile number(s), email address (es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy ("Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") was in effect.
Indicate the current status of the domain name.
By email dated November 28, 2001, the Registrar advised WIPO Center as follows:
It had received a copy of the Complaint from the Complainant.
It is the Registrar of the domain name registration <pichu.com>.
"Enic.net, Ename and taeho kim" at the address shown above are the "current registrants" of the domain name.
Taeho Kim Daisy at the same address is the billing, administrative and technical contact.
The domain name registration <pichu.com> is currently "not active".
The Registrar has currently incorporated in its agreements the Policy adopted by ICANN.
The advice from the Registrar that the domain name in question is "not active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with OnelineNIC. Accordingly, the Respondent is bound by the provisions of the Registrar’s Domain Name Dispute Resolution Policy, i.e., the ICANN Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on December 11, 2001, transmitted by post-courier and by email a notification of Amended Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Amended Complaint was also emailed to the Registrar and ICANN. The Respondent filed a Response after obtaining an extension of time on January 8, 2002.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
The Honorable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On January 25, 2002, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. In terms of Paragraph 15(b) of the Rules, in the absence of exceptional circumstances, the Panel would have been required to forward its decision by February 8, 2002.
On December 14, 2001, the Complainant sought leave to file a supplementary submission. On January 27, 2002, it sought leave to file a Reply to the Response. The Panel agreed to grant these requests principally because of matters raised in the Response. The Respondent was given 2 working days within which to comment on new matters contained in the Complainant’s additional filings. It duly filed a supplemental Response. All these additional documents have now been considered by the Panel. In view of the delays caused by these extra submissions, the date by which the Panel can deliver the decision is now February 14, 2002.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
On February 8, 2002, Complainant’s attorney requested a teleconference between the Panel and the lawyers for the parties. Counsel opined that such a conference would be helpful to the Panel in view of the conflicting statements. Paragraph 13 of the Rule states that there shall be no in-person hearings (including teleconferences, video conferences and web conferences) unless the Panel determines, in its sole discretion and as an exceptional matter that such a hearing is necessary for determining the Complaint. In the opinion of the Panel, this was not one of those exceptional cases where the Panel should order a teleconference. The whole thrust of the Policy is for a speedy decision on the papers. Panelists are not able to resolve conflicts of evidence. Only a court or arbitration hearing could do that. Nor would a Panelist be able to resolve conflicts by hearing the competing assertions of the parties expressed through Counsel. The Complainant’s request for a teleconference was accordingly dismissed.
4. Factual Background
Nature of the Dispute
Complainant Nintendo of America Inc. is a subsidiary of Nintendo Co. Ltd of Kyoto, Japan, collectively referred to as "Nintendo", which is in the business of marketing and distributing video game systems, software and accessories. As part of its business, Complainant owns the POKÉMON® trademark and brands.
Nintendo markets and distributes POKÉMON® video games and licenses a wide range of POKÉMON® products. The POKÉMON® trademark and POKÉMON® products have been widely advertised and extensively offered. Worldwide, the POKÉMON® franchise has grossed more than US$15 billion since its original introduction in Japan in February 1996.
In many POKÉMON® games, the player assumes the role of a POKÉMON® trainer and travels through an imaginary world trying to collect specimens of each POKÉMON® character. With increasing experience and skill, some of the POKEMON characters evolve into other characters. The goal of POKÉMON® games is to become the greatest POKÉMON® trainer ever and to collect each POKÉMON® character.
There are at least 250 POKÉMON® characters. Each has a unique name. One central original POKEMON characters is PIKACHU®, a mouse-like creature with ability to shoot electric bolts out of its cheeks. PICHU™ is a character featured in successor POKÉMON® games and merchandize. Specifically, the PICHU™ character is a pre-evolution PIKACHU®. The existence of the PICHU™ character was first announced on or slightly before November 15, 1999 in Shogakukan magazine, Koro-koro Comics. The magazine featured official illustrations of POKÉMON® game software and contained illustrations of the PICHU™ character. The release of new POKÉMON® quickly found its way onto the internet. In Japan, release of magazines on to the market can precede the official publication date.
Since the release of new POKÉMON® characters including PICHU™, the POKÉMON® franchise has continued its success. Licensees have introduced numerous product lines based on the new characters, including PICHU™.
Complainant’s parent company holds trademark registrations for the PICHU mark in Japan. It applied for its Japanese registrations on June 17, 1999 (PICHU) and December 28, 1999 (PICHU & Device). These marks were registered on February 10, 2000, and September 22, 2000, respectively. On February 4, 2000, Complainant filed intent to use trademark applications at the United States Patent and Trademark Office for the PICHU™ mark. Complainant has received trademark registrations for the PICHU mark in Korea, Taiwan, Germany, France and the United Kingdom and other countries. It has trademark applications pending in further countries.
On November 15, 1999, the same day as the PICHU™ character name was announced, Respondent registered the disputed domain name, <pichu.com>. On March 26, 2000, Respondent sent Complainant an unsolicited email in which he indicated he was selling <pichu.com> and offered to sell it to Complainant. On November 15 and 16, 2000, Complainant sent Respondent a ‘cease and desist’ email and letter.
Respondent in reply refused to comply with Complainant’s request. Respondent in reply asserted that (1) he registered the Domain Name with the intent to create a website "with Korean language for [his] own, non profits"; (2) the website would not be related to Nintendo’s products or company; (3) Complainant had the opportunity to register the name, that it chose not to register the domain name and could not now complain; and (4) "pichu" has another meaning in Korean (unstated).
On December 20, 2000, Complainant’s outside counsel sent a further ‘cease and desist’ letter to Respondent. Respondent on December 21, 2000, stating that Complainant had U.S. trademark applications pending for PICHU™ but that he had registered the <pichu.com> domain name before Complainant registered its <pichu.net> and <pichu.org> domain names. Respondent again asserted that "pichu" had another meaning in Korean, although he failed to state what that meaning was. He alleged that he had registered the Domain Name for his own business. Respondent threatened to sue Complainant if he were contacted again about this matter, and also threatened to sell the Domain Name to another in order to prevent Complainant from obtaining it.
From Respondent’s original contact in March 2000, until Complainant’s correspondence with Respondent in November 2000, the registration information stated that the registrant was <televisiones.com> and Kim Taeho. During this period the <pichu.com> domain name automatically redirected to the website at <http://www/rnic.net/parking_dotcomdns.html>, which consisted of over 25 banner advertisements, all in English. The domain name <rnic.net> is also registered to Kim Taeho with an email contact of <mailto:firstname.lastname@example.org>.
On December 8, 2000, the <pichu.com> website resolved to an "under construction" page that also displayed several banner advertisements. This web page provided the email address of "email@example.com" as a contact address. While the content of the web page had changed, the WHOIS information remained the same, listing <televisiones.com> and Kim Taeho as the registrants.
By December 21, 2000, <pichu.com> again automatically redirected to the banner ad containing website at <http://www/rnic.net/parking_dotcomdns.html>. Shortly after Complainant’s outside counsel sent Respondent its letter, the registrant information for <pichu.com> changed. As of January 2, 2001, the registrant was changed to <www.kiwkmed.com>, Steeve Forum. In addition, the website content changed and the <pichu.com> domain name automatically resolved to <http://www.kwikmed.com>, a web page advertising the online sale of Viagra. In fact, on January 2, 2001, the domains <kiwkmed.com>, <televisiones.com> and <pichu.com> all resolved to <http://www.kwikmed.com>.
Sometime between January 2, 2001 and October 29, 2001, the registrant information for <pichu.com> again listed Kim Taeho as a contact. As of the date of filing, the WHOIS information stated that the registrant is <enic.net> and "taeho kim" at the address noted earlier. As of October 26, 2001, attempts to visit <pichu.com> return a message that the site is currently unavailable. <Enic.net> is also registered to Taeho Kim with an email address of firstname.lastname@example.org. A search conducted through the online commercial service revealed that there are at least 655 domain names registered with the email content of email@example.com.
These allegations are supported by declarations from the Complainant’s witnesses. Most have not been denied by Respondent who has not made any declaration or affidavit.
5. Parties’ Contentions
Complainant owns the PICHU™ trademark. Respondent’s domain name <pichu.com> is identical to and wholly incorporates the PICHU™ mark.
Respondent has no legitimate interest in <pichu.com> because (1) he has not used the Domain Name in connection with a bona fide offering of goods or services; (2) Respondent is not making a legitimate non-commercial or fair use of the Domain Name; and (3) Respondent is not commonly known as the Domain Name or the character name mark. Complainant has not permitted Respondent to use any of its marks.
Since Respondent first registered <pichu.com> approximately two years ago, the website has either resolved to a page filled with banner advertisements or been "under construction". If Respondent’s activity is considered to be a failure to develop a website in connection with the Domain Name, then it is evidence that Respondent has no rights or legitimate interests in the Domain Name. Currently, the <pichu.com> domain name does not resolve to an active website.
Respondent, in response to Complainant’s first communication, claimed that he intended to use the Domain Name in a legitimate, non-commercial or fair manner. But, unsupported assertions of intended use cannot establish legitimate rights. Respondent’s claim that he registered the Domain Name to develop a Korean language, non-profit website unrelated to Complainant or its products is unsupported. This claim is refuted by Complainant’s actual use of the <pichu.com> domain name which, for a time, redirected to web pages displaying banner advertisements in English.
Respondent’s claim of intended non-commercial use is inconsistent with his original unsolicited communication to Complainant that he was interested in selling the disputed domain name. Respondent’s claim of developing a non-commercial website is inconsistent with his threat to sell the name if Complainant contacted him again. Respondent’s apparent willingness to transfer the name demonstrates that he never intended to use it for a legitimate purpose, but rather registered it hoping that the owner of the trademark would purchase it from him. By offering to sell the name to Complainant and later threatening to transfer it to another party, Respondent essentially admits he has no legitimate right to the name.
Respondent’s lack of legitimate interest in the use of the disputed domain name is also supported by analogous facts in a previously-decided WIPO Case against Respondent. In Mucos Emulsions v Esex.org and Kim Taeho (No. D2000-1513), the Panel ordered the transfer of the contested domain name to the Complainant "regardless of who is listed as the current owner of the domain name" based in part on the finding that Respondent Taeho had no legitimate interest in the domain name "<wobenzym.com>". The domain name did not form any part of the Respondents’ names and the Respondents did not provide the panel with any evidence of using or making preparations to use the domain name in connection with a bona fide offering of goods or services. Kim Taeho had registered a domain name after the Complainant had allowed the domain name to expire. Taeho then offered to sell the domain name to the Complainant. When an attorney notified Respondent of the Complainant’s rights, he replied that he was not offering the name for sale and that he was going to use it non-commercially. The Panel ordered the transfer of the domain name to the Complainant, noting that the registrant transferred the contested domain name to <kiwkmed.com> with an administrative contact listed as "steeve, k ‘firstname.lastname@example.org’" after receiving a copy of UDRP complaint, but before the Registrar had the opportunity to "freeze" the domain name.
Respondent’s actions in this case are similar to his conduct in the Mucos Emulsions case. Here, Respondent initially offered to sell the domain name, but when contacted by Complainant’s legal representatives, he asserted that he had plans to develop a non-commercial website. Respondent also transferred the domain name to "<www.kiwkmed.com>" and Steeve Forum, with an email address of email@example.com after being contacted by Complainant.
The use of a domain name identical or confusingly similar to Complainant’s trademarks creates a likelihood of confusion for internet users searching for the POKÉMON® characters. By using <pichu.com>, Respondent diverts people looking for the PICHU™ or PIKACHU® characters, and potentially deprives Complainant of visits by internet users. Registration and use of the name must have been intended misleadingly to divert consumers from the complainant’s website to the respondent’s.
Respondent’s registration of <pichu.com> on the same day as Complainant’s official public unveiling of the new POKÉMON® character, in addition to the fact that the website has never been used in connection with bona fide offering of goods or services, are clear evidence that Respondent registered the name misleadingly to divert consumers seeking information on Complainant’s trademarked character to his own website. Respondent’s use of Complainant’s mark creates the inaccurate impression that Complainant endorses, sponsors, or is otherwise affiliated with Respondent’s website. Respondent is not commonly known by the name or nickname of the name.
Respondent’s attempts to negotiate for the sale of <pichu.com> and his threat to sell elsewhere are evidence that Respondent registered and used the name in bad faith.
Bad faith registration and use can be found where the content of the website consists mostly of banner advertisements. See Nokia Corp. v Nokiagirls.com a.k.a. IBCC (No. D2000-0102 – WIPO). While the <pichu.com> website is currently inactive, Respondent recently used the website to display banner advertisements and an "under construction" notice. During the period where Respondent was initially listed in the WHOIS information (before the transfer was made to <kiwkmed.com> and Steeve Forum) the <pichu.com> website resolved to a URL associated with <rnic.com> that displayed a list of more than 25 banner advertisements. This evidence is sufficient to support a finding that Respondent registered and is using <pichu.com> in bad faith.
Failure to develop a website is an indication of bad faith. Although Respondent first registered <pichu.com> approximately two years ago, he has yet to use it for any legitimate purpose. Respondent’s original use of the <pichu.com> domain name to display banner advertisements, and his transfer of the domain name to another entity shortly after receiving notice from Complainant show that his use was violating Complainant’s rights, as is the recent return of control to Respondent.
Respondent must have been aware of Complainant’s rights in the trademark PICHU because POKÉMON® games and characters were well-known prior to Respondent’s registration of the name and there was widespread coverage of the announcement of new POKÉMON® characters. Respondent’s awareness of Complainant’s rights in the PICHU trademark can be inferred from the fact that Respondent registered <pichu.com> the very day that the PICHU™ character was officially released to the public and months after Complainant had submitted applications for trademark registration in Japan.
Bad faith registration may be inferred because the unique qualities of the mark outweigh the likelihood that the Respondent created the name independently. While Respondent has asserted that "pichu" has a meaning in the Korean language, no such meaning has been demonstrated.
Respondent has engaged in a pattern of registering domain names to prevent the rightful owners of the marks from reflecting the mark in a corresponding domain name. Respondent has registered at least 655 domain names with the email contact of <firstname.lastname@example.org>. While the entire list of domain names registered to Respondent are not provided due to cost considerations, the WHOIS information for the domain names consisting of various mis-spellings of the trademark Network Solutions (<networksolutuons.com>, <networksolutionis.com>, <networksoluotions.com>) as well as registration for "<harrypotters.co.kr>" establish Respondent’s pattern of registering domain names to profit off the trademark rights of others.
Complainant is a major multi-national company and purveyor of video games. Respondent, Taeho Kim, is a web developer with an interest in registering domain names that are generic and capable of development by himself or by various other persons and companies. The other named Respondents may have been recorded as registrants at one time or another, however it has always been Taeho Kim who owned the names and was the actual registrant.
In order to meet the preliminary requirement of Paragraph 4 of the UDRP, Complainant must demonstrate trademark rights in the word "PICHU". Complainant’s first registrations of Japanese trademarks in connection with the word "PICHU" occurred on February 19, 2000, and various other applications, such as the one in Korea followed. The registration of the subject domain name <pichu.com> occurred, however, on November 15, 1999.
Respondent registered the domain name <pichu.com> prior to any application or registration for trademark in Korea, where Respondent resides. As such, he was unaware of any trademark rights that Complainant may have had. Respondent’s rights to the subject domain name pre-date any rights that Complainant may have acquired subsequent to the registration of the domain name.
A domain name should not be transferred where Respondent’s registration of the domain name pre-dates the filing of an application for trademark registration by Complainant. Since Complainant is unable to demonstrate trademark rights which pre-date Respondent’s registration, Respondent submits that the Complainant must fail and that the Panel need not consider the remaining two elements of Paragraph 4 of the UDRP.
The word "pichu" is common in both Korean and Spanish. The Spanish word "Pichu" means "mountain". In Korean "Pichu" means "smiles". Respondent states that, in all likelihood, Complainant selected the word "Pichu" for one of its thousands of characters specifically because of its meaning. As such, the Korean word "Pichu" came first, and the character "Pichu" came second. Complainant now seeks to monopolize a word adopted from the Korean language in the first place. Being composed entirely of a common word, it is a generic domain name capable of a multitude of applications.
Respondent, a Korean web designer by profession, registered the name with the intent either of developing a humor website or selling the domain name to a company or person who wished to use the domain name in connection with its own business. The name was not registered with the Complainant or any specific company in mind. Respondent knew that there were hundreds of companies who might be interested in the domain name if he were unable to develop the service himself.
Due to the well-known failure of the internet and information technology markets and Respondent’s own lack of time, the website and service originally intended by Respondent was never fully developed. Respondent can demonstrate bona fide preparations to use the domain name. He attaches a copy of his "draft humor website" prepared prior to any notice of this dispute. Where a domain name is generic, the first person to register it in good faith is entitled to the domain name. This is considered a "legitimate interest".
Respondent states that since the word "Pichu" is capable of use by more than a single company that sells video games, and is merely one character within a video game, the scope of Complainant’s trademark rights is insufficient to bar Respondent from acquiring legitimate rights of its own in the same term when used for a different purpose.
Pursuant to Paragraph 4(a)(iii) of the UDRP, Complainant must prove BOTH "bad faith registration" and "bad faith use". It is submitted that without proving "bad faith registration", Complainant cannot succeed. There is no evidence to show that Complainant registered the domain name with Complainant in mind.
Because Complainant has no evidence of Respondent registering the domain name with Complainant in mind, it attempts to infer bad faith. For example, Complainant accuses Respondent of attempting to sell the domain name to Complainant. Respondent concedes that he contacted Complainant over 4 months after he registered the domain name in the hope of selling it to Complainant. Respondent had faced a series of financial problems that made it impossible for him to continue developing his humor website.
Due to the failure of the web development market, Respondent was facing bankruptcy and therefore hoped to sell his generic domain name <pichu.com> to Complainant. Respondent states that he only made this solicitation on the basis that he was not violating any law because of the generic nature of the domain name, notwithstanding Complainant’s probable interest in the word. Complainant also accuses Respondent of "passive holding of the domain name", even though Respondent only registered the domain name a short period prior to the dispute between the parties and commencement of this proceeding.
Complainant fails to demonstrate passive holding as understood by the UDRP in this respect, because of the very short time period that Respondent owned <pichu.com>. See for example Mondich and Am. Vintage Wine Biscuits, Inc. v Brown (D2000-0004 WIPO) (finding Respondent cannot be said to lack a bona fide intent to use the domain name when only 10 months have passed since registration); See also Casual Corner Group, Inc. v Young FA 95112 (Nat. ;Arb. Forum Aug. 7, 2000) (finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the Complaint). Only after a two-year period of non-use is there an inference of a lack of bona fide intent to use the name.
Respondent states that he did not file a Response to the other WIPO proceeding as he was unable to afford legal representation and had too poor an understanding of the English language. Respondent states that, had he filed a Response, many of the factual and legal findings would have been different and negative inferences against him would not have been drawn by that Panel.
Complainant’s Supplemental Submissions
At the time the Complaint was filed on November 16, 2001, the domain name site was inactive. As of December 10, 2001, the domain name automatically and instantly redirected to a commercial Web site that offers the domain name for sale and displays thirty banner advertisements, all in English, including those advertising and linking to "adult" and gambling sites.
The web page also contains content that refers to and links to other internet content owned by Respondent. For example, the web page states that "All Rights Reserved by eNIC.NET". A link to one of the Respondents’ email addresses "email@example.com" is provided for viewers with questions about the web page.
The Respondent does not have rights or a legitimate interest in the domain name, which was registered and is being used in bad faith. The display of an offer to sell the domain name after the Complaint was filed in this case, is evidence that the registrant does not have plans to develop a website. Inclusion of 30 banner advertisements is an indication that the Respondent has intentionally attempted to attract users for commercial gain by creating at least an initial likelihood of confusion as to the Web site’s source or affiliation. Moreover, the inclusion of adult content advertisements, such as advertisements for escort services, Viagra sales, and online gambling, is particularly likely to damage the considerable goodwill Complainant has developed in its PICHU® trademark.
"Pichu" does not mean "smiles" in Korean or "mountain" in Spanish. Respondent argues for the first time that "pichu" is generic because it means "smiles" in Korean and/or "mountain" in Spanish. Respondent provides no support for these new claims. Korean-English dictionaries show that there is no Korean word "pichu", that the Korean word for the noun "smile" is "miso", and the Korean word for the verb "smile" is "mishohada" or "pangg t utta". The Oxford Spanish Dictionary does not list "pichu" as a Spanish word: the Spanish word for mountain is "montaña". Because the word "pichu" is not a generic word in Korean or Spanish as alleged by the Respondent, and the Respondent has provided no evidence to this effect, his argument regarding alleged rights and "good faith" registration fails.
Respondent has changed the use of his website. Respondent’s use of the site has been a "moving target". At the time of Complainant’s First Supplemental Submission, Respondent had changed his use of the <pichu.com> domain name to redirect to a web page offering the domain name for sale and containing 30 banner advertisements. After the submission, he again changed the use of the domain name by redirecting it, for the first time, to a commercial Korean language site at http://www.chamgyo.com/?cp=dzone. Even this site, however, has no connection with the word "smiles".
Respondent’s updated print-out from an unrelated website is misleading. Purportedly to evidence his good faith preparation, Respondent has submitted an undated print-out from the site at < www.smile4u.co.kr>. At least one of the advertisements displayed references a domain name (<insuwa.com>) first registered on April 11, 2001, after Respondent’s initial solicitation to sell the name to Complainant. The footer indicates a print-out from the website "<smile4u.co.kr>". Respondent does not address why he was able to post his "draft" website at <smile4u.co.kr>, but not at <pichu.com>. Moreover, the printout emanated from a computer that does not recognize Korean fonts. The Respondent’s statement that the website and service "was never fully developed" because the current website at <smile4u.co.kr> is identical to that exhibited to the Response. As a result of these inconsistencies, the Panel should find that Respondent has not demonstrated preparations to use the <pichu.com> domain name in connection with a bona fide offering of goods or services.
Respondent has registered at least 650 domain names, some of which are clearly not generic names (e.g. <harrypotters.co.kr>, <networksolutuons.com>, <networksolutionis.com>, networksoluotions.com>). Respondent has a pattern of registering well-known trademarks, not generic names.
Respondent claims for the first time that he was always the owner of the domain name. This is either (1) new information that Kim Taeho and Steeve Forum are aliases for the same person or (2) a mis-characterization of the WHOIS information showing that the entire contact information for the name changed shortly after Respondent was contacted by Complainant. If "Steeve Forum" is an alias, then the transfer of the domain name shortly after such contact and the use of the domain name to link to a web page selling Viagra demonstrates Respondent’s bad faith intent in attempting to attract, for commercial gain, internet users to his website or other on-line location. If the Respondent’s transfer to "Steeve Forum" was legitimate, then Respondent temporarily, but completely, divested himself of interest in the domain name, which creates a new registration date upon the transfer of the domain name back to the Respondent. Respondent clearly was aware of Complainant’s rights at the time he re-acquired the domain name. By his own admission, he had abandoned his alleged "originally intended . . . humour web site". Under either analysis, Respondent’s actions are indicative of both bad faith registration and use.
The Response mis-states and mis-characterizes prior WIPO decisions because of:
(a) Paragraph 15 of the Response incorrectly states that "Respondent’s registration of the domain name pre-dates the filing of an application for trademark registration by Complaint [sic].". As shown by the documents submitted with the Complaint, Nintendo first applied for registration of the PICHU mark on June 17, 1999, prior to the initial registration of the <pichu.com> domain name on November 15, 1999.
(b) Respondent refers to Pet Warehouse v Pets.com Inc. (No. D2000-0105 – WIPO, Apr. 13, 2000), to support his position that the Complaint should fail because Nintendo has not established rights which pre-date Respondent’s registration. But, as stated above, Nintendo has established prior rights in the PICHU mark. In addition, Pet Warehouse addressed whether the owner of a store called "Pet Warehouse" had established trademark rights in that name. Finding that the name "Pet Warehouse" was generic, and that the complainant had not established secondary meaning, the panelist found that the complainant had not established rights in the mark.
(c) Respondent misleadingly cites American Vintage Wine Biscuits, Inc. v Brown (D2000-0004) in paragraph 34 of the Response. Contrary to Respondent’s citation, the American Vintage Wine panel found bad faith registration based in part on respondent’s failure to use the domain name.
Complainant has established each of the three elements of a UDRP. First, it has shown that it had rights in the PICHU mark prior to the Respondent’s registration of the <pichu.com> domain name. Second, Respondent does not have rights in the name because "pichu" is not a generic word. Third, Respondent registered and used the domain name in bad faith. The registrant’s pattern of cyber-squatting as shown by his registrations of various well-known trademarks, including "Harry Potter" and "Network Solutions", is evidence that he registered <pichu.com> in bad faith. Moreover, Respondent’s unsupported explanation that he approached Complainant and offered to sell the domain name to it just 4 months after registering the domain name due to an impending bankruptcy is not credible. Rather, Respondent’s explanation is nothing more than an attempt to justify what is otherwise a clear indication of bad faith registration and use.
Respondent’s Supplementary Response
Web pages support Respondent’s position as to the meaning of <pichu>. In any event, Complainant has failed to explain how it selected this name for its fictional character.
Respondent is the registrant for <smile4u.co.kr> as per WHOIS information. This shows he is in the business of producing humor sites such as his unfinished <pichu.com> site.
The numerous domain names referred to by the Complainant are registered to various companies for which Respondent is merely a web developer and/or administrative contact.
Any change in administrative contact details is "inconsequential to the issue of actual ownership and in any event was not intended to avoid this Complaint".
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under Paragraph 4(a) of the Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
In the Panel’s view, the domain is identical to the marks in which the Complainant has rights.
The Complainant gave the Respondent no rights to use its marks. Therefore the Respondent has to come within one of the limits of Paragraph 4(c) of the Policy. The only one which could possibly apply is that the Respondent, before any notice to it of the dispute, made demonstrable preparations, to use the domain name in connection with a bona fide offering of goods or services.
In the view of the Panel, the Respondent has failed to meet this criterion for the following reason:
(a) There is no proof by him that ‘pichu’ is a common generic word in Korean which would be used in a variety of commercial applications. The Korean dictionaries produced by Complainant show there is no such word in Korean or indeed (as asserted by Respondent) in Spanish.
(b) The "draft humour website" annexed to the Response is undated. One of the references is to a domain name registered in April 11, 2001. The website exhibited is the same as one recently displayed at <smile4u.co.kr>. As the Complainant’s counsel pointed out correctly, Respondent’s use of the website is a ‘moving target’. It has changed from banners to the ‘humor site’.
(c) There is the confusion over the ownership of the domain name as articulated in the Complainant’s submissions. Respondent has not in the Panel’s view satisfactorily explained all the ‘comings and goings’ surrounding registration. Accordingly, the Panel finds that the Respondent has not made out this defence and the second criterion is proved.
The Panel infers bad faith registration from the fact that the Respondent registered the name PICHU more or less simultaneously with the release of the POKEMON character PICHU. The worldwide fame and popularity of the Pokemon characters cannot be understated. It is just too coincidental that this registration happened at the same time as the character PICHU was announced to the world. For a not dissimilar act of opportunism, see The London Metal Exchange Ltd v Hussein (WIPO Case No. D2000-1388).
Respondent’s attempts to sell the name, his failure to develop a meaningful website, his shifting conduct over ownership of the name and the content of the website all contribute to an overall finding of continuing bad faith. His registration of names incorporating "Harry Potter" or "Network Solutions" indicates that he is not in the business of wholesaling merely generic names.
The Complaint is therefore proved. The following further matters named in the submissions need brief comment.
(a) Contrary to Respondent’s statement, the Complainant first applied for registration of the mark on June 17, 1999 – before the domain name registration on November 15, 1999.
(b) There is no general principle that a domain name registration will not be challenged if registration preceded the application by a Complainant for trademark registration. If this were so, then all the numerous WIPO decisions upholding common law trademarks would have been incorrect.
(c) Respondent’s previous involvement with the Policy and an administrative proceeding (WIPO Case No. D2000-1513) indicates that he is no stranger to the Policy’s provisions. As noted by the Complainant, there is a similarity between his conduct shown by the Respondent in that case and his iterations over registration in the present case.
(d) Respondent’s assertion is that he does not own registrations for names like <harrypotters.co.kr> but is only a website designer for some other entity with which he had no connection. This must be treated with some scepticism in the absence of material contradicting the Complainant’s submissions.
(e) There was no obligation on Complainant to articulate the processes whereby the name Pichu was chosen. It does appear to be in the genre of Pikachu. In contrast, the Complainant’s assertion that ‘pichu’ means mountain in Spanish is hard to accept. He may have been thinking of ‘Macchu Pichu’ in Peru. One would assume that the word ‘Pichu’, whatever it may mean in that context, was of Inca or indigenous Peruvian Indian origin, certainly neither Korean nor Spanish.
(f) There is no general rule, as asserted in Respondent’s submissions, that non-use of a website can be inferred only after a 2 year period. Every case has to be assessed on its facts to see whether a bad faith inference is possible.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <pichu.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: February 14, 2002