WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sankyo Co., Ltd. v. Zhu Jiajun
Case No. D2000-1791
Also in PDF D2000-1791
1. The Parties
The Complainant is Sankyo Co., Ltd. with its principal place of business at 5-1,Nihonbashi Honcho 3-chome, Chuo-ku, Tokyo 103-8426, Japan.
The Respondent is Zhu Jiajun, with an address at Room 101, No.12,ShengQingLi, DaHua Road, ShanTou, GuangDong, China.
2.The DomainName and Registrar
The domain name at issue is , which domainname is registered with OnlineNic, Inc., 3435 Wilshire Blvd., Los Angeles,California, 90010, U.S.A., d/b/a C, 9F, International TradeBuilding, South Hubin Road, Xiamen, Fujian, China.
3. Procedural History
The Complaint submitted by the Complainant, Sankyo Co., Ltd., was received by faxand e-mail on December 21 and 22, 2000 respectively and in hardcopy on
December 29, 2000 by the WIPO Arbitration and Mediation Center (the Center). An acknowledgmentof receipt was sent by the Center to the Complainant on
December 28, 2000.
On January 15, 2001, a Request for Registrar Verification was transmitted to the registrar, OnlineNic, Inc. (Online Nic) requesting it to: (1) confirm that a copy ofthe Complaint was sent to the registrar by the Complainant, as required by WIPOSupplemental Rules for Uniform Dispute Resolution Policy (the Supplemental Rules), Paragraph 4(b); (2) confirm that the domain name at issueis registered with OnlineNic; (3) confirm thatthe person identified as the Respondent is the current registrant of the domainname; (4) provide the full contact details (i.e., postal address(es), telephonenumber(s), facsimile number(s), e-mail address(es)) available in theregistrar�fs Whois database for the registrant of the disputed domain name, thetechnical contact, the administrative contact and the billing contact; (5) confirmthat the Uniform Domain Name Dispute Resolution Policy (the Policy)applies to the domain name; (6) indicate the current status of the domain name;(7) indicate the language of the registration agreement for the domain name.
On January 16, 2001, OnlineNic confirmedby reply e-mail that the domain name (�gbq—�h inrow-based ASCII Compatible Encoding) was registeredwith OnlineNic, that the Respondent, ZhuJiajun, was the current registrant of the domain name,and that the registration agreement for the domain name was in English. The Registrarindicated having put the status of the domain name to "on hold" and forwardedthe requested Whois details. On
January 19, 2001, the Registrar confirmed by reply e-mail theapplicability of the Policy to the domain name at issue.
Inaccordance with Paragraph 4(a) of the Rules for Uniform Domain Name DisputeResolution Policy (the Rules) andParagraph 5 of the Supplemental Rules, the Center has verified that theComplaint satisfies the formal requirements of the Policy, Rules andSupplemental Rules. A Formal Requirements ComplianceChecklist was completed by the assigned WIPO Center Case Administrator onJanuary 20, 2001. The Panel has independently determined and agrees with theassessment of the Center that the Complaint is in formal compliance with therequirements of the Policy, the Rules, and the Supplemental Rules. Paymentin the required amount to the Center has been made by the Complainant.
No formal deficiencies having been recorded, on January 23, 2001,a Notification of Complaint and Commencement of Administrative Proceeding (the�gCommencement Notification�h) was transmitted to the Respondent (with copies tothe Complainant, OnlineNicand ICANN), setting a deadline of February 11, 2001,by which the Respondent could file a Response to the Complaint. TheCommencement Notification was transmitted to the Respondent by e-mail,facsimile, and post/courier in accordance with the contact details indicated inthe Complaint and specified in OnlineNic�fsWhois confirmation.
A timely response was submitted to and received by WIPO bye-mail on
February 10, 2001 and in hardcopy on February 14, 2001.
On February 19, 2001, in view of the Complainant�fs designation ofa single panelist (but without prejudice to any election to be made by theRespondent) the Center invited Sang Jo JONG to serve as apanelist in Case No. D2000-1791, and transmitted to him a Statement ofAcceptance and Request for Declaration of Impartiality and Independence.
Having received Sang Jo JONG�fs Statement of Acceptance and Declarationof Impartiality and Independence, the WIPO Center transmitted to the parties,on
February 22, 2001, a Notification of Appointment of AdministrativePanel and Projected Decision Date. The Projected Decision Date was March 7,2001. The Sole Panelist finds thatthe Administrative Panel was properly constituted and appointed in accordancewith the Rules and the Supplemental Rules.
To clarify some issues which were raised by the Response and theReply to the Response, the Administrative Panel Procedural Order No.1("Panel Order") was issued on March 6, 2001. The Panel Order requeststhe Parties to answer some questions regarding infringement of JapaneseTrademark Law, the existence of the Sankyo Art Center, registration of multipledomain names, and the distinctiveness of the Complainant's mark "�O��." In accordance with the Panel Order, both parties madesubmissions by March 13, 2001, the last date on which the parties wererequested to file their submissions. Consequently, delivery of this decision has been delayed whilst thesesubmissions have been considered by the Panel.
The languageof the administrative proceeding is English, being the language of theregistration agreement.
4. FactualBackground
The trademark upon which the Complaint is based is "�O�� (SANKYO)" registered and being in actual usein the Complainant�fs name in a number of countries including Japan, PeoplesRepublic of China and the U.S.A. Copies of trademark registrations, annexed tothe Complaint, comprises details of the Complainant�fs trademarks registrations inrelevant countries. Suffice to say the trademark "�O��(SANKYO)" is registered in relevant jurisdictions, and in most cases, thetrademark is well established over a considerable period of time.
The contested domain name was registered on November 10, 2000. It is clear from the Registrar's verification that the statusof the contested domain name was "on hold."
The disputed domain name (�O��.com) is a so-called Multilingual Domain Name (MDN) originated by VeriSign Global Regisry Services as a Testbed to register domain names in non-English language character sets in .com, .net, and .org. By the nature of its Testbed status, MDN registration is not fully functional as of the date of the Complaint being filed. Instead, the Respondent has opened a website at (san-gong is the pronunciation of �O�� in Chinese) for "Sankyo Art Salon" for which the Respondent is arguing to have initially registered �O��.com.
5. Parties�fContentions
A. The Complainant
Identicality or confusingsimilarity as between the domain name and trade marks
The Complainant contends that the domain name is exactly identical with the Complainant,Sankyo Co., Ltd.�fs trademark �g�O���h which isregistered and used extensively in Japan, China, and the U.S.A..
Respondent�fs rights orlegitimate interests in the domain name
The Complainant contends that the Respondent does not have anyright or interests in the domain name, taking into account the fact that theRespondent is not operating an active website under the domain name as of the date of the Complaint beingfiled. In addition, theComplainant points out that the Respondent, as an individual, is not identifiedby the name �O�� and, also, that anycommercial use of �O�� (SANKYO) by the Respondentwould contravene the Japanese Trademark Law and/or the Unfair CompetitionPrevention Law.
The Complainant contends that registration of multiple domainnames similar to other well-known trade names is inconsistent with an intent toengage in any bona fide activity to use the domain name . For example, the Respondent hasregistered other multilingual domain names like and each of which is, respectively,identical to the essential and distinctive part of the well-known trade name ofother pharmaceutical manufacturing companies in Japan, Shionogi & Co., Ltd.(����`�������ShionogiSeiyaku Kabushiki Kaisha) and Tanabe Seiyaku Co., Ltd. (�c�Ӑ������Tanabe Seiyaku Kabushiki Kaisha).
Bad faith on the part ofthe Respondent
According to the Complaint, the Complainant'strademark �g�O���his so famous in Japan, China and the U.S.A. that the Respondent was undoubtedlyaware of the Complainant�fs fame at the time it registered the domain name. TheRespondent's awareness is also ascertained by the Respondent's registration ofseveral multilingual domain names which are identical and/or confusinglysimilar to the well known trade names and registered trademarks ofpharmaceutical companies.
The Respondent's registration and use of thedomain name in bad faith is evidenced by the Respondent's knowledge of the Complainant'srights in the mark �O��(SANKYO) and its preventing the Complainant from using domain name thatincorporates its famous mark �O�� (SANKYO) written in symbolic characters ofJapanese kanji which has a strong image as the indicator of the Complainant'sbusiness and products.
In addition, registration of many multilingualdomain names which are identical or confusingly similar to well known and/orfamous trade names and trademarks used by prominent companies in the samepharmaceutical manufacturing industry indicates the Respondent's pattern ofconduct aimed at preventing owners of such trademarks, including theComplainant, from using its own trademark and/or the most essential partthereof, in a corresponding domain name (the Policy 4 (b)(ii)).
The Complainant has used the mark �O�� (SANKYO) substantiallyand continuously for more than one hundred years and spent a substantial amountof money every year on advertising its products and the brand image of themark. The Respondent'sregistration and use of domain name could disruptthe Complainant's business and cause substantial confusion among the publictrying to reach the website of the Complainant and thereby cause serious damageto the Complainant and to the good will associated with the Complainant's brand�O�� (SANKYO). TheRespondent's awareness of the prominence and fame of the Complainant's mark �O�� (SANKYO) and theconfusion among the public to be caused, further infers that the Respondentregistered the domain name �O�� (SANKYO) in bad faith either for the purpose ofselling or otherwise transferring domain name registration to the Complainantin excess of the Respondent's out-of-pocket costs directly related to thedomain name (the Policy 4 b (i)).
B. Respondent
The Respondent contends that he has rights and legitimate interests in the domainname on the basis of the fact that he has registered �O��.com for the officialand non-commercial website of an organization named "Sankyo ArtSalon", which the Respondent participated in founding. Especially, theRespondent points out that �O�� comprises two Japanese kanji, �O (meaning"three") and ��(meaning"together") and, thus, that the term �O�� is descriptive inJapanese. �O��in Chinese has the same meaning. The Respondent contends that "Sankyo Art Salon,"for which the Respondent contends to have registered the disputed domain name,is designed for an art presentation mode that combines three artistic forms ofliterature, music and painting together. Since MDN cannot function properly tothis day, the Respondent has registered a domain name (san-gong is thepronunciation of �O��in Chinese) and is constructing a website under this domain name. See . Accordingly, theRespondent contends that, just as many other Japanese firms use the name �O�� in their business, theRespondent has the equal rights to use this name as the domain name for anon-commercial website.
With regard to bad faith, the Respondent deniesall the allegations which were made by the Complainant. Especially, theRespondent rebutted the Complainant's allegation that the Respondent'sregistration of multilingual domain names like and in addition to thedisputed domain name, which are identical or confusingly similar to well knownand/or famous trade names and trademarks of pharmaceutical companies, indicatesthe Respondent's bad faith by showing that (correspondingto ) and (corresponding to ) have all been registered not by the pharmaceuticalcompanies but by others.
6. Discussion and Findings
A question was raised by the Respondent with regard to theapplicability of the Policy to the domain name at issue. The Panel noticed thatthe registration of the domain name is in the .com space, to which the Policyapplies. The RegistrationAgreement ("Agreement") concluded by the Respondent and the Registrarmakes it clear that the holder of the multilingual domain name is bound by thePolicy which is incorporated into the Agreement by reference and made a part ofthe Agreement. See Section 5 of the Agreement. The Policy is designed tobalance conflicting interests of an owner of a trademark and a registrant of adomain name, a source identifier affecting Internet traffic. Multilingual domainnames also function as a source identifier and affect Internet traffic exactlyin the same way as other English-language domain names do. Accordingly, it isnatural in view of their function and clear from the Agreement that the Policyapplies to multilingual as well as English-language domain names.
Paragraph 4(a) of the Policy directs that the Complainant must proveeach of the following:
(1) that the domain name registered by the Respondent is identical or confusinglysimilar to a trademark or service mark in which the Complainant has rights;and,
(2) that the Respondent has no rights to or legitimate interests in the domain name atissue; and,
(3 the domain name at issue has been registered and used in bad faith.
Identicality or confusingsimilarity as between the domain name and trademark
Having ignored the generic top-level domain (gTLD) ".com" of the domain name , the Panel finds that the domain name at issue is identical to the Complainant's trademark and trade name �g�O���h. As to the insignificance of the generic top-level domain in determining identicality or confusing similarity as between the domain name and trademark at issue, see VAT Holding AG v V, Case No. D2000-0607. Furthermore, the Respondent has not contested that the domain name is identical to or confusingly similar with the Complainant's trademark.
Respondent�fs rights orlegitimate interests in the domain name
It is not contested that the Complainant has not authorized theRespondent to use the trademark "�O��".Neither does the Respondent have the rights to the trademark "�O��" in any class of goods or services in Japan,China or the United States of America, nor does the Respondent's name have anyrelationship with "�O��".
Based upon the above uncontested facts, the Complainant contends thatthe Respondent has no rights or legitimate interests in respect of the domainname at issue. The Respondent denies the Complainant's contention by pointingout some degree of descriptiveness of the Complainant's trademark "�O��" comprising two Japanese kanji, �O(meaning "three") and ��(meaning "together") and argues that theRespondent has the equal rights to use the term "�O��"as the domain name.
Although the Complainant's trademark "�O��" comprising two Japanese kanji may, by its nature of a hieroglyph, convey its own meaning "three together", the very meaning may not be regarded as describing the Complainant's products or services. Nor does the term "�O��" appear in �厫�сidaijirin�jdictionary/encyclopedia (the explanation of the dictionary states that this is mega dictionary-encyclopedia which contains 233000 words from old Japanese to fresh modern Japanese of all fields.). As a matter of principle, registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. The Respondent has the burden of refuting this presumption. See, e.g., L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No. D2000-0047. The Respondent has, however, failed to refute this presumption. The panel finds that there is no substantial evidence showing that the term "�O��" is a descriptive mark for the purpose of the trademark law. Accordingly, the Panel does not agree with the Respondent's contention that the Respondent has equal rights to use the term "�O��" merely by registering it as the domain name. See Barney�fs Inc. v. BNY Bulletin Board, Case No. D2000-0059.
The Respondent contends that, since more than 30 firms other than the Complainant use the term "�O��" in their business, the Respondent has equal rights to use the term as a domain name. It may be arguable that any of the firms using the term "�O��" could argue that they have a right or legitimate interest in respect of domain names containing the same term. It is not clear to the Panel, however, whether the Respondent is such a firm having a right or legitimate interest in the domain name. See ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002, Case No. D2000-0034.
The Respondent may still prove his rights or legitimate interests inrespect of the domain name by demonstrating any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent's use of, ordemonstrable preparations to use, the domain name or a name corresponding tothe domain name in connection with a bona fide offering of goods or services;or
(ii) the Respondent (as an individual, business, or other organization) has beencommonly known by the domain name, even if the Respondent has acquired notrademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name,without intent for commercial gain to misleadingly divert consumers or totarnish the trademark or service mark at issue.
With regard to the first circumstance of the Respondent's use of the domain name in connection with a bona fide offering of goods or services, the Complainant raises a question whether there is any bona fide activity by the Respondent at all. The Complainant's question on a bona fide activity is based upon the fact that the Respondent has also registered other multilingual domain names like and as well. It appears to the Panel, however, that lack of a bona fide activity for the purpose of Paragraph 4(c)(i) of the Policy is different from bad faith for the purpose of Paragraph 4(b) of the Policy. Just as an owner of multiple trademarks may use his/her marks in connection with a bona fide offering of goods or services, so a registrant of multiple domain names may also use his/her domain names in connection with a bona fide activity. As an example of registration of multiple domain names which were found to have been used in connection with bona fide activities, see Port of Helsinki v. Paragon International Projects Ltd., Case No. D2001-0002. Registration by the Respondent of multiple domain names may, however, only affect the Panel in finding the Respondent's bad faith, which will be discussed later.
It is not contested that the Respondent has not been commonly known bythe domain name.
Turning to the third circumstance of non-commercial or fair use of the domain name, the Respondent contends that he registered the domain name at issue for a non-commercial website and the Respondent has, as evidence of non-commercial use, submitted a printout copy of a website for Sankyo Art Salon ("Salon"), an allegedly non-commercial activity, under a domain name "". While the Respondent contends that the Salon would hold non-commercial activities, it is not clear to the Panel how the Salon's activities are to be financed. If the Respondent registered the domain name with the fame of the Complainant's trademark in his mind, primarily to stimulate interest in the Salon but also for the purpose of generating revenues from the advertising banners on a relevant site, the use of the domain name by the Respondent could not be found as non-commercial. If the Respondent registered the domain name with the intention of diverting to his site Internet traffic intended for the Complainant so that the Salon would benefit from such diversion of Internet traffic in any sense, the use by the Respondent of the domain name could not be found as non-commercial. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, Case No. D2000-1698.
Assuming that the use of the domain name or the Salon's activities do not generate any revenues or profits, the Respondent could not show a legitimate interest in the disputed domain name if he did not submit to the Panel any details on the Salon or any other activities for which the Respondent allegedly registered the disputed domain name. Respondents did not state even the name of the Salon's founding members. The only plausible conclusion to draw from the evidence presented to the Panel is that the Respondent intended to warehouse the domain name. Even in accordance with the Administrative Panel Procedural Order No.1 requesting the Respondent to submit detailed statement on the Salon, the Respondent simply reiterated that the Salon was a plan proposed by the Respondent. Evaluation of all of the evidence leads the Panel to the conclusion that any proposed activity of the Salon was superficial and not a legitimate or fair use of the domain name. See Yahoo! Inc., v. Silicon City and Osama Al-Ayoub, Case No. D2000-1711
Accordingly, the Panel finds that the Respondent does not have anyrights or legitimate interests in respect of the domain name .
Bad faith on the part ofthe Respondent
Paragraph4(b) of the Policy provides that the following circumstances, if found by thePanel to be present, shall be evidence of the registration and use of a domainname in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has acquiredthe domain name primarily for the purpose of selling, renting, or otherwisetransferring the domain name registration to the Complainant who is the ownerof the trademark or service mark or to a competitor of the Complainant, forvaluable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of thetrademark or service mark from reflecting the mark in a corresponding domainname, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose ofdisrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract,for commercial gain, Internet users to the Respondent's web site or otheron-line location, by creating a likelihood of confusion with the Complainant'smark as to the source, sponsorship, affiliation, or endorsement of theRespondent's web site or location or of a product or service on the Respondent'sweb site or location.
The Complainant contends the Respondent's bad faith by pointingout the Respondent's registration of multiple domain names like and in addition to each of which is,respectively, identical to the essential and distinctive part of the well-knowntrade name or trademarks of other pharmaceutical manufacturing companies. As panelistsare developing a jurisprudence on the Policy on a case-by-case basis byoffering interpretations of the Policy such as the meaning of bad faith withregard to registration of multiple domain names, this Panel issued the AdministrativePanel Procedural Order No.1 requesting the Respondent to answer the questionwhat rights or legitimate interests the Respondent has in the domain name. Inhis reply, however, the Respondent merely reiterates his existing position thatthe Respondent�fs registration of multiple domain names like and should not affectthe Panel in the current case on .
It can be inferred from the registration of a number of domain names incorporating well-known trade names or trademarks, first of all, that the Respondent has intended to acquire and warehouse the domain names without any specific rights or legitimate interests in them. The effect of this warehousing is to give the Respondent a possible chance to sell those domain names for profit (the Policy 4 (b)(i)). See Nabisco Brands Company v. The Patron Group, Inc. Case No. D2000-0032. The warehousing of domain names also indicates the Respondent's pattern of conduct aimed at preventing trademark owners, including the Complainant, from using its own trademark and/or the most essential part thereof, in a corresponding domain name (the Policy 4 (b)(ii)). See Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., Case No. D2000-0802; ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002, Case No. D2000-0034.
Accordingly, the Panel finds that the domain name was registeredand is used by the Respondent in bad faith.
7. Decision
In light of the foregoing, the Panel decides that the Complainant has proven eachof the three elements in paragraph 4(a) of the Policy in relation to the domainname .
Pursuant to paragraph 4 of the Policy and paragraph 15 of the Rules, the Panel requiresthat the Registrar, OnlineNic, Inc, transfer the domain name to the Complainant, Sankyo Co., Ltd.
Sang Jo JONG
Sole Panelist
Dated: March 23, 2001
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