WIPO Domain Name Decision D2000-1791 for 三共.com

page 1 WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sankyo Co., Ltd. v. Zhu Jiajun Case No. 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 Domain Name and Registrar The domain name at issue is , which domain name is registered withOnlineNic, Inc., 3435 Wilshire Blvd., Los Angeles, California, 90010, U.S.A., d/b/aC, 9F, International Trade Building, 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). Anacknowledgment of 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 theregistrar, OnlineNic, Inc. (Online Nic) requesting it to: (1) confirm that a copy of theComplaint 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 issue is registered with OnlineNic;(3) confirm that the person identified as the Respondent is the current registrant of thedomain name; (4) provide the full contact details (i.e., postal address(es), telephonenumber(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whoisdatabase for the registrant of the disputed domain name, the technical contact, theadministrative contact and the billing contact; (5) confirm that the Uniform Domain page 2 Name Dispute Resolution Policy (the Policy) applies to the domain name; (6) indicatethe current status of the domain name; (7) indicate the language of the registrationagreement for the domain name. On January 16, 2001, OnlineNic confirmed by reply e-mail that the domain name (“bq—” in row-based ASCII Compatible Encoding) wasregistered with OnlineNic, that the Respondent, Zhu Jiajun, was the current registrantof the domain name, and that the registration agreement for the domain name was inEnglish. The Registrar indicated having put the status of the domain name to "on hold"and forwarded the requested Whois details. On January 19, 2001, the Registrar confirmed by reply e-mail the applicability of thePolicy to the domain name at issue. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name DisputeResolution Policy (the Rules) and Paragraph 5 of the Supplemental Rules, the Centerhas verified that the Complaint satisfies the formal requirements of the Policy, Rulesand Supplemental Rules. A Formal Requirements Compliance Checklist was completedby the assigned WIPO Center Case Administrator on January 20, 2001. The Panel hasindependently determined and agrees with the assessment of the Center that theComplaint is in formal compliance with the requirements of the Policy, the Rules, andthe Supplemental Rules. Payment in the required amount to the Center has been madeby the Complainant. No formal deficiencies having been recorded, on January 23, 2001, a Notification ofComplaint and Commencement of Administrative Proceeding (the “CommencementNotification”) was transmitted to the Respondent (with copies to the Complainant,OnlineNic and ICANN), setting a deadline of February 11, 2001, by which theRespondent could file a Response to the Complaint. The Commencement Notificationwas transmitted to the Respondent by e-mail, facsimile, and post/courier in accordancewith the contact details indicated in the Complaint and specified in OnlineNic’s Whoisconfirmation. A timely response was submitted to and received by WIPO by e-mail on February 10, 2001 and in hardcopy on February 14, 2001. On February 19, 2001, in view of the Complainant’s designation of a single panelist(but without prejudice to any election to be made by the Respondent) the Center invitedSang Jo JONG to serve as a panelist in Case No. D2000-1791, and transmitted to him aStatement of Acceptance and Request for Declaration of Impartiality and Independence. Having received Sang Jo JONG’s Statement of Acceptance and Declaration ofImpartiality and Independence, the WIPO Center transmitted to the parties, on February 22, 2001, a Notification of Appointment of Administrative Panel andProjected Decision Date. The Projected Decision Date was March 7, 2001. The SolePanelist finds that the Administrative Panel was properly constituted and appointed inaccordance with the Rules and the Supplemental Rules. To clarify some issues which were raised by the Response and the Reply to theResponse, the Administrative Panel Procedural Order No.1 ("Panel Order") was issuedon March 6, 2001. The Panel Order requests the Parties to answer some questionsregarding infringement of Japanese Trademark Law, the existence of the Sankyo ArtCenter, registration of multiple domain names, and the distinctiveness of theComplainant's mark "." In accordance with the Panel Order, both parties made page 3 submissions by March 13, 2001, the last date on which the parties were requested to filetheir submissions. Consequently, delivery of this decision has been delayed whilstthese submissions have been considered by the Panel. The language of the administrative proceeding is English, being the language of theregistration agreement. 4.Factual Background The trademark upon which the Complaint is based is " (SANKYO)" registered andbeing in actual use in the Complainant’s name in a number of countries including Japan,Peoples Republic of China and the U.S.A. Copies of trademark registrations, annexed tothe Complaint, comprises details of the Complainant’s trademarks registrations inrelevant countries. Suffice to say the trademark " (SANKYO)" is registered inrelevant jurisdictions, and in most cases, the trademark is well established over aconsiderable period of time. The contested domain name was registered on November 10, 2000. It isclear from the Registrar's verification that the status of the contested domain name was"on hold." The disputed domain name (.com) is a so-called Multilingual Domain Name(MDN) originated by VeriSign Global Regisry Services as a Testbed to register domainnames in non-English language character sets in .com, .net, and .org. By the nature ofits Testbed status, MDN registration is not fully functional as of the date of theComplaint being filed. Instead, the Respondent has opened a website at (san-gong is the pronunciation of in Chinese) for "Sankyo Art Salon"for which the Respondent is arguing to have initially registered .com. 5.Parties’ Contentions A.The Complainant Identicality or confusing similarity as between the domain name and trade marks The Complainant contends that the domain name is exactly identical withthe Complainant, Sankyo Co., Ltd.’s trademark “” which is registered and usedextensively in Japan, China, and the U.S.A.. Respondent’s rights or legitimate interests in the domain name The Complainant contends that the Respondent does not have any right or interests inthe domain name, taking into account the fact that the Respondent is not operating anactive website under the domain name as of the date of the Complaintbeing filed. In addition, the Complainant points out that the Respondent, as anindividual, is not identified by the name and, also, that any commercial use of (SANKYO) by the Respondent would contravene the Japanese Trademark Lawand/or the Unfair Competition Prevention Law. The Complainant contends that registration of multiple domain names similar to otherwell-known trade names is inconsistent with an intent to engage in any bona fideactivity to use the domain name . For example, the Respondent has page 4 registered other multilingual domain names like and eachof which is, respectively, identical to the essential and distinctive part of the well-known trade name of other pharmaceutical manufacturing companies in Japan,Shionogi & Co., Ltd. (Shionogi Seiyaku Kabushiki Kaisha) andTanabe Seiyaku Co., Ltd. (Tanabe Seiyaku Kabushiki Kaisha). Bad faith on the part of the Respondent According to the Complaint, the Complainant's trademark “” is so famous inJapan, China and the U.S.A. that the Respondent was undoubtedly aware of theComplainant’s fame at the time it registered the domain name. The Respondent'sawareness is also ascertained by the Respondent's registration of several multilingualdomain names which are identical and/or confusingly similar to the well known tradenames and registered trademarks of pharmaceutical companies. The Respondent's registration and use of the domain name in bad faith isevidenced by the Respondent's knowledge of the Complainant's rights in the mark (SANKYO) and its preventing the Complainant from using domain name thatincorporates its famous mark (SANKYO) written in symbolic characters ofJapanese kanji which has a strong image as the indicator of the Complainant's businessand products. In addition, registration of many multilingual domain names which are identical orconfusingly similar to well known and/or famous trade names and trademarks used byprominent companies in the same pharmaceutical manufacturing industry indicates theRespondent's pattern of conduct aimed at preventing owners of such trademarks,including the Complainant, 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 (SANKYO) substantially and continuouslyfor more than one hundred years and spent a substantial amount of money every year onadvertising its products and the brand image of the mark. The Respondent's registrationand use of domain name could disrupt the Complainant's business andcause substantial confusion among the public trying to reach the website of theComplainant and thereby cause serious damage to the Complainant and to the good willassociated with the Complainant's brand (SANKYO). The Respondent'sawareness of the prominence and fame of the Complainant's mark (SANKYO)and the confusion among the public to be caused, further infers that the Respondentregistered the domain name (SANKYO) in bad faith either for the purpose ofselling or otherwise transferring domain name registration to the Complainant in excessof the Respondent's out-of-pocket costs directly related to the domain name (the Policy4 b (i)). B.Respondent The Respondent contends that he has rights and legitimate interests in the domain nameon the basis of the fact that he has registered .com for the official and non-commercial website of an organization named "Sankyo Art Salon", which theRespondent participated in founding. Especially, the Respondent points out that comprises two Japanese kanji, (meaning "three") and (meaning "together") and,thus, that the term is descriptive in Japanese. in Chinese has the samemeaning. The Respondent contends that "Sankyo Art Salon," for which the Respondentcontends to have registered the disputed domain name, is designed for an art page 5 presentation mode that combines three artistic forms of literature, music and paintingtogether. Since MDN cannot function properly to this day, the Respondent hasregistereda domain name (san-gong is the pronunciation of inChinese) and is constructing a website under this domain name. See . Accordingly, the Respondent contends that, just as many other Japanesefirms use the name in their business, the Respondent has the equal rights to usethis name as the domain name for a non-commercial website. With regard to bad faith, the Respondent denies all the allegations which were made bythe Complainant. Especially, the Respondent rebutted the Complainant's allegation thatthe Respondent's registration of multilingual domain names like and in addition to the disputed domain name, which are identical orconfusingly similar to well known and/or famous trade names and trademarks ofpharmaceutical companies, indicates the Respondent's bad faith by showing that(corresponding to ) and (corresponding to) have all been registered not by the pharmaceutical companies but byothers. 6.Discussion and Findings A question was raised by the Respondent with regard to the applicability of the Policyto the domain name at issue. The Panel noticed that the registration of the domain nameis in the .com space, to which the Policy applies. The Registration Agreement("Agreement") concluded by the Respondent and the Registrar makes it clear that theholder of the multilingual domain name is bound by the Policy which is incorporatedinto the Agreement by reference and made a part of the Agreement. See Section 5 of theAgreement. The Policy is designed to balance conflicting interests of an owner of atrademark and a registrant of a domain name, a source identifier affecting Internettraffic. Multilingual domain names also function as a source identifier and affectInternet traffic exactly in the same way as other English-language domain names do.Accordingly, it is natural in view of their function and clear from the Agreement thatthe Policy applies to multilingual as well as English-language domain names. Paragraph 4(a) of the Policy directs that the Complainant must prove each of thefollowing: (1)that the domain name registered by the Respondent is identical orconfusingly similar to a trademark or service mark in which theComplainant has rights; and, (2)that the Respondent has no rights to or legitimate interests in the domainname at issue; and, (3)the domain name at issue has been registered and used in bad faith. Identicality or confusing similarity 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 theComplainant's trademark and trade name “”. As to the insignificance of the generictop-level domain in determining identicality or confusing similarity as between thedomain name and trademark at issue, see VAT Holding AG v V, Case No. D2000- page 6 0607. Furthermore, the Respondent has not contested that the domain name is identical to or confusingly similar with the Complainant's trademark. Respondent’s rights or legitimate interests in the domain name It is not contested that the Complainant has not authorized the Respondent to use thetrademark "". Neither does the Respondent have the rights to the trademark ""in any class of goods or services in Japan, China or the United States of America, nordoes the Respondent's name have any relationship with "". Based upon the above uncontested facts, the Complainant contends that the Respondenthas no rights or legitimate interests in respect of the domain name at issue. TheRespondent denies the Complainant's contention by pointing out some degree ofdescriptiveness of the Complainant's trademark "" comprising two Japanese kanji,(meaning "three") and (meaning "together") and argues that the Respondent hasthe equal rights to use the term "" as the domain name. Although the Complainant's trademark "" comprising two Japanese kanji may, byits nature of a hieroglyph, convey its own meaning "three together", the very meaningmay not be regarded as describing the Complainant's products or services. Nor does theterm "" appear in daijirindictionary/encyclopedia (the explanation ofthe dictionary states that this is mega dictionary-encyclopedia which contains 233000words from old Japanese to fresh modern Japanese of all fields.). As a matter ofprinciple, registration of a mark is prima facie evidence of validity, which creates arebuttable presumption that the mark is distinctive. The Respondent has the burden ofrefuting this presumption. See, e.g., L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu YeaEnterprises, Inc., Case No. D2000-0047. The Respondent has, however, failed to refutethis presumption. The panel finds that there is no substantial evidence showing that theterm "" 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 hasequal rights to use the term "" merely by registering it as the domain name. SeeBarney’s Inc. v. BNY Bulletin Board, Case No. D2000-0059. The Respondent contends that, since more than 30 firms other than the Complainant usethe term "" in their business, the Respondent has equal rights to use the term as adomain name. It may be arguable that any of the firms using the term "" couldargue that they have a right or legitimate interest in respect of domain names containingthe same term. It is not clear to the Panel, however, whether the Respondent is such afirm 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 in respect of thedomain 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 page 7 (iii) the Respondent is making a legitimate noncommercial or fair use of the domainname, 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 inconnection with a bona fide offering of goods or services, the Complainant raises aquestion whether there is any bona fide activity by the Respondent at all. TheComplainant's question on a bona fide activity is based upon the fact that theRespondent has also registered other multilingual domain names like and as well. It appears to the Panel, however, that lack of a bona fideactivity for the purpose of Paragraph 4(c)(i) of the Policy is different from bad faith forthe purpose of Paragraph 4(b) of the Policy. Just as an owner of multiple trademarksmay use his/her marks in connection with a bona fide offering of goods or services, so aregistrant of multiple domain names may also use his/her domain names in connectionwith a bona fide activity. As an example of registration of multiple domain nameswhich were found to have been used in connection with bona fide activities, see Port ofHelsinki v. Paragon International Projects Ltd., Case No. D2001-0002. Registration bythe Respondent of multiple domain names may, however, only affect the Panel infinding the Respondent's bad faith, which will be discussed later. It is not contested that the Respondent has not been commonly known by the domainname. 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 allegedlynon-commercial activity, under a domain name "". While the Respondentcontends that the Salon would hold non-commercial activities, it is not clear to thePanel how the Salon's activities are to be financed. If the Respondent registered thedomain 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 generatingrevenues from the advertising banners on a relevant site, the use of the domain name bythe Respondent could not be found as non-commercial. If the Respondent registered thedomain name with the intention of diverting to his site Internet traffic intended for theComplainant so that the Salon would benefit from such diversion of Internet traffic inany 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, CaseNo. D2000-1698. Assuming that the use of the domain name or the Salon's activities do not generate anyrevenues or profits, the Respondent could not show a legitimate interest in the disputeddomain name if he did not submit to the Panel any details on the Salon or any otheractivities for which the Respondent allegedly registered the disputed domain name.Respondents did not state even the name of the Salon's founding members. The onlyplausible conclusion to draw from the evidence presented to the Panel is that theRespondent intended to warehouse the domain name. Even in accordance with theAdministrative Panel Procedural Order No.1 requesting the Respondent to submitdetailed statement on the Salon, the Respondent simply reiterated that the Salon was aplan proposed by the Respondent. Evaluation of all of the evidence leads the Panel tothe conclusion that any proposed activity of the Salon was superficial and not alegitimate or fair use of the domain name. See Yahoo! Inc., v. Silicon City and OsamaAl-Ayoub, Case No. D2000-1711 page 8 Accordingly, the Panel finds that the Respondent does not have any rights or legitimateinterests in respect of the domain name . Bad faith on the part of the Respondent Paragraph 4(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 domain name inbad faith: (i) circumstances indicating that the Respondent has registered or theRespondent has acquired the domain name primarily for the purpose ofselling, renting, or otherwise transferring the domain name registration tothe Complainant who is the owner of the trademark or service mark or to acompetitor of the Complainant, for valuable consideration in excess ofdocumented out-of-pocket costs directly related to the domain name; or (ii) the Respondent has registered the domain name in order to prevent theowner of the trademark or service mark from reflecting the mark in acorresponding domain name, provided that the Respondent has engaged in apattern 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 toattract, for commercial gain, Internet users to the Respondent's web site orother on-line location, by creating a likelihood of confusion with theComplainant's mark as to the source, sponsorship, affiliation, orendorsement of the Respondent's web site or location or of a product orservice on the Respondent's web site or location. The Complainant contends the Respondent's bad faith by pointing out the Respondent'sregistration of multiple domain names like and in additionto each of which is, respectively, identical to the essential and distinctivepart of the well-known trade name or trademarks of other pharmaceuticalmanufacturing companies. As panelists are developing a jurisprudence on the Policy ona case-by-case basis by offering interpretations of the Policy such as the meaning of badfaith with regard to registration of multiple domain names, this Panel issued theAdministrative Panel Procedural Order No.1 requesting the Respondent to answer thequestion what rights or legitimate interests the Respondent has in the domain name. Inhis reply, however, the Respondent merely reiterates his existing position that theRespondent’s registration of multiple domain names like and should not affect the Panel in the current case on . It can be inferred from the registration of a number of domain names incorporatingwell-known trade names or trademarks, first of all, that the Respondent has intended toacquire and warehouse the domain names without any specific rights or legitimateinterests in them. The effect of this warehousing is to give the Respondent a possiblechance to sell those domain names for profit (the Policy 4 (b)(i)). See Nabisco BrandsCompany v. The Patron Group, Inc. Case No. D2000-0032. The warehousing of domainnames also indicates the Respondent's pattern of conduct aimed at preventing trademarkowners, including the Complainant, from using its own trademark and/or the mostessential part thereof, in a corresponding domain name (the Policy 4 (b)(ii)). See Toyota page 9 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 deFootball Association v. J.Y. Chung, W, W Co., and Worldcup 2002,Case No. D2000-0034. Accordingly, the Panel finds that the domain name was registered and isused by the Respondent in bad faith. 7.Decision In light of the foregoing, the Panel decides that the Complainant has proven each of thethree elements in paragraph 4(a) of the Policy in relation to the domain name. 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 theComplainant, Sankyo Co., Ltd. ________________________________ Sang Jo JONG Sole Panelist Dated: March 23, 2001

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