WIPO Domain Name Decision D2001-0307 for 毎日新聞.com

page 1 WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kabushiki Kaisha Mainichi Shimbunsha v. Pilyun Kim Case No. D2001-0307 1. The Parties The Complainant is Kabushiki Kaisha Mainichi Shimbunsha (its English name: The MainichiNewspapers), a company incorporated under the laws of Japan, with its principal place ofbusiness at 1-1, Hitotsubashi 1-chome, Chiyoda-ku Tokyo, 100-8051, Japan. The Respondent is a physical person Pilyun Kim with his contacting address atPunghodongwoosung Apt 116-103 Jinhae, Kyungnam 645-320, Korea. 2.The Domain Name and Registrar The domain name in dispute is [ (BQ—3BV44ZPFMWYIAXQ.COM)],which is registered with the registrar A of 2261 Morello Ave Suite CPleasant Hill, CA 94523, USA. 3.Procedural History The Center received the Complaint of the Complainant on March 2 and 6, 2001 by emailand in hard copy respectively. On March 7, 2001, the Center sent to the Complainant the acknowledgement of receipt ofthe Complaint. The Center sent to the Registrar a request for verification of registration on March 20, 2001. On April 17, 2001, the Registrar confirmed that the domain name indispute is registered with A and the Respondent is the current registrant ofthe domain name. The current status of the disputed domain name is on hold awaitingresponse from Maincihi to expedite the transfer of the ownership. On April 8, 2001, the Center received the communication from the Respondent. The Center completed the formal Requirements Compliance Checklist on April 17, 2001. page 2 On April 18, 2001, the Center received the communication from the Respondent and madethe reply accordingly at the same day. On April 20, 2001, the Center sent to the Respondent the Notification of Complaint andCommencement of the Administrative Proceeding. This notification was sent by themethods required under paragraph 2(a) of the Rules. The formal date of thecommencement of this administrative proceeding is April 20, 2001. The Center received the Response submitted by the Respondent by e-mail on May 9, 2001and in hard copy on May 14 and 21, 2001. On May 9 and 10, 2001, the Center sent to the Respondent the acknowledgement of receiptof the Response. On May 22, 2001, after receiving a completed and signed Statement of Acceptance andDeclaration of Impartiality and Independence, the Center notified the parties of theappointment of a single-member panel consisting of Mr. Li Yong. 4. Factual Background The Complainant is a Japanese newspaper publishing company established in 1872, withits principal office in Tokyo and other main offices and branch offices in other cities ofJapan as well as some foreign correspondents in some cities throughout the world. The Complainant owns trademark rights over the logotype “” in Japan. Thecurrent version of the Complainant’s logotypes “” that appeared on theComplainant’s newspapers were registered with Japanese Patent Office as Complainant’strademarks on June 29, 1994 and on November 30, 1994, of which trademark registrationsexpire on June 29, 2004 and on November 30, 2004 respectively. The trademarks above-mentioned are in class 26 of the classifications of goods and services under JapaneseTrademark Law 1959, which included “newspapers” and “printed matters”. The registered trademark of “” consists of four Chinese characters, which means“daily newspaper”. The domain name [ (BQ—3BV44ZPFMWYIAXQ.COM)] was createdon November 9, 2000, according to the search result made by the complainant shown in theAnnex 1 of the Complaint. 5. Parties’ Contentions The Complainant’s contentions are as follows: (1) The Complainant publishes and circulates “” (“Mainichi Shimbun”) dailynewspaper and uses its trademark “” as a logotype on its newspaper that iswell known among readers as well as its trademark. Thus, the “Mainichi Shimbun” isappreciated as one of the three major daily newspapers with a national circulationthroughout Japan together with “Asahi Shimbun ” and “Yomiuri page 3 Shimbun ”. The names of these three newspapers are also famous amongKorean people who are familiar with Japan. In Korea, not only Hangul alphabets astheir own letters, but also Chinese characters are used among Korean people.Therefore, it is not incomprehensible that a Korean who is familiar with the names ofJapanese newspapers plots to prevent Japanese newspaper publishing companiesfrom registering corresponding domain names that reflect each company’strademark. (2) The Complainant plans to acquire the multilingual domain name inKanji characters to reflect its registered trademark “” in a correspondingdomain name. The Complainant unfortunately failed to acquire the registration of theplanned domain name , though it applied for the domain name onthe first day when it became available in Japan. The Complainant’s investigationthereafter revealed that the identical domain name with what the Complainantplanned to acquire had registered somehow by the Respondent on November 9, 2000. Moreover, the Complainant confirmed that the Respondent also registered, as well as , all of which reflectthe trademarks of “ (Asahi Shimbun)” and “ (YomiuriShimbun),” the two of the three major newspaper publishing companies as well asanother well-known newspaper publishing company in Japan “ (SankeiShimbun)” on the same date of his/her registration of the disputed domain namethrough the same Registrar who handled the registration of the disputed domainname. The Complainant believes that the Respondent has intentionally acquired hisregistrations of the above domain names, including the disputed domain name, whichare correspondent to trademarks of Japanese major newspaper publishing companiesso that the Respondent can prevent these companies from registering correspondingdomain names that reflect each company’s trademark. (3) The Complainant believes that, the disputed domain name that is registered by theRespondent is identical or confusingly similar to registered trademarks in which theComplainant has rights. The Respondent should be considered as having no rights orlegitimate interests in respect of the domain name that is subject of the Complaint,because the Respondent resides in Korea where the Complainant has never licensedanybody to use the Complainant’s registered trademark. Furthermore, the disputeddomain name should be considered as having been registered in bad faith in order toprevent the owner of the trademark from reflecting the mark in a correspondingdomain name, because (i) the Respondent acquired his registration of the disputeddomain name from outside of the country where the Complainant is mainly doingbusiness, before it became available by a duly and legitimate procedure in the samecountry, and (ii) the Respondent acquired three other registrations of domain namesthat were correspondent to trademarks of three other business entities of the sameindustry of the Complainant simultaneously through the same Registrar with theregistration of the disputed domain name. The Respondent’s contentions are as follows: (1) The Complainant does not have any legal right for the domain in question. TheChinese word “” is pronounced maeilshinmun in Korean and it is acombination of very widely used generic words. Maeil means daily and page 4 shinmun means news or newspapers. Therefore, the Chinese word is translated dailynews or daily newspaper in English. The complainant does not have any of thetrademarks of Daily, DailyNews and DailyNewsPapers in English and also has noclaim to the exclusive right of the Chinese Domain (.com) translated intoDailyNews in English. Almost all of the newspapers in Asia use one of these Chinesecharacters, maeil , maeilshinmun or ilbo which aresynonyms in Chinese and means daily news or daily newspaper. The maeilshinmun is most widely used. Therefore, maeilshinmun in Chinese is a verywidely used, generic word for every newspaper in Korea, China, Japan and so on.The complainant is well aware of this fact and is only trying to take control of thisdomain for the sole purpose of restricting the business of smaller newspapercorporations. On the other hand, there are many maeilshinmun (Daily newspaper) inKorea and in fact one of them has the trademark in Korean. Also there are manydaily newspapers all across China, such as a famous China-daily-news who mighthave the trademark. Therefor, it is not acceptable that a local Japanese companyshould have the only exclusive right for this kind of a generic domain. (2) The Complainant’s trademark is only a local one, which legally can be applied inJapan and not outside. In fact the Complainant only has “mainichi” as a USA federaltrademark but it does not have “mainichishimbun” as a USA federal trademark. It iswidely recognized that USA federal trademark is widely and officially recognized asa world trademark. And also “.com” is commonly used only for worldwidecompanies or individuals. (3) The official name of the complainant is Kabushiki Kaisha Mainichi Shimbunsha. Thedomain in question is not identical or even similar to their company name. Althougha company can have many trademarks to protect their business, or to prevent theircompetitors from using those names or marks, in this case, the Complainant couldn’tinsist that they have the legal right of all the identical or similar domains. This caseshould be considered as an attempt to act in bad faith or further, a legal attempt atdomain hijacking. The complainant only use the name “mainichi” for internationalbusiness with its trademark, not mainichishimbunsha in Chinese, referring to theirsite /english. (4) The Complainant’s trademark is not identical to the domain. Different from theEnglish character, Chinese character has a meaning of itself but an English characterdoes not have any meaning of itself. As such, each Chinese character can be used asa word. Therefore each character can be used for various purposes such as the namesof people, businesses, companies, identification and so on. In order to combat theconfusion, a system of seals was created. Within this system, only one seal, where thecharacters are carved on wood or other hard material, could exist. The owner of theseal is able to identify himself from others by stamping the seal on the documentwhen he needs to identify himself to someone. In this case, the stamped mark is100% the same as on the document, because there are many people using sameChinese characters in Chinese influenced area such as China, Korea, Japan and so on.Every Korean and company has at least one or more seal in Chinese to identifyhimself/herself because there are so many of the same names. Therefore, thecomplaint should be aware that they do not have any rational background for theirinsistence that their seal type trademark is identical to the generic words“maeilshinmun” in Chinese. page 5 (5)The purpose of a domain is to be used as a IP address for an Internet web sitebutthe complainant does not own and use any of /net/org, any /net/org, any of /net/org, any /net/org and any of /net/org as its official domainwebsite. (bq—3bv44zpfmwyiaxq).cc, tv and ws are available to registernow. The Complainant has no reason to make claim on the disputed domain name.There are many “” in Japan such as “”, “”,“”, “”and so on. It is impossible that they allinfringe the trademark of the Complainant. This shows that the complainant shouldnot have any exclusive right for the domain because it is widelyused across the world and even in Japan by several news paper cooperation. Thisgeneric domain at hand will not bring any loss of business activity to them. TheRespondent also should suppose that the Complainant will not use this domain astheir official domain for their site because it is widely known that most of Japanesecompanies use their own countries domain (.) and also they are able to obtainand use the multilingual-Japanese domain.. With these proofs uncovered and known to all, the complainant obviously has noright to insist that they have any right for this domain and their plot to snatch thisgeneric domain from a weaker party should be dismissed. (6) The registration by the Respondent of other Chinese domain names does not showthe Respondent’s bad faith, because there are hundreds of initials and differentmeanings in each Chinese character and also each Chinese character has its ownmeaning. Therefore, there are many same names used for different purposes inChinese culturally influenced areas. The Respondent plans to use his domain namesfor promoting the public interest activities. The Respondent has not been able to usethis domain for the planned website because ITEF has not yet approved themultilingual domains to be an official family member of gTDLs. And therefore,anyone who has any multilingual domains can not use any multilingual domains for awebsite yet. 6. Discussion and Findings In accordance with the Policy, the Complainant asking for transfer of the domain namemust prove the following three elements: 1) Respondent's domain name is identical orconfusingly similar to a trademark or service mark in which the Complainant has rights; 2)Respondent has no rights or legitimate interests in the domain name; and 3) Respondenthas registered the domain name and is using it in bad faith. (ICANN Policy, 4 (a)). Identical or Confusingly Similar The domain name at issue is [ (BQ—3BV44ZPFMWYIAXQ.COM)].The Panel finds that the characters of this domain name “” is completelyidentical with the registered trademarks held by the Complainant in Japan. The top leveldomain designator ".com" is only a necessary portion to form a business-related domainname and cannot function to distinguish that name from the Complainant’s trademarks.When deciding whether the disputed domain name is identical or confusingly similar to a page 6 trademark, the key point is to compare the second level of the disputed domain name withthe substantial part of the trademark. The panel has noticed the Respondent’s contentionthat the Complainant’s trademark is only a local one, which legally can be applied in Japanand not outside. The panel does not support this contention based on the following reasons:firstly, ICANN Policy does not require any complainants to own “international trademarkright” or trademark right of any particular country in order for them to make claims; andsecondly, the disputed domain name is a multilingual domain name, itcan be regarded as a Chinese domain name and a Japanese domain name as well becauseChinese characters in traditional form are frequently used in Japan. Keeping the above inmind, the Panel believes that the first element of the ICANN Policy, 4(a) is met. Respondent’s Rights or Legitimate Interests in the Domain Name The Respondent has not provided evidence of circumstances of the type specified in theICANN Policy, 4(c). There exists no evidence that the Respondent, before receipt anynotice of the dispute, has used the domain name or a name corresponding to the domainname in connection with bona fide; or that the Respondent has been commonly known bythe domain name; or that the Respondent is making a legitimate noncommercial or fair useof the domain name. Furthermore, the Respondent has not provided evidence of any othercircumstances giving rise to a right or legitimate interest in the disputed domain name,though he said he planned to use the disputed domain name to promote the public interestactivities. On the other hand, the Complainant clearly declared that he has never licensedanybody to use his registered trademarks. As such, the Panel believes that the Respondenthas no rights or legitimate interests with respect to the disputed domain name. Domain Name Registered and Used in Bad Faith Paragraph 4(b) of the ICANN Policy specifies four types of circumstances that could beevidence of the registration and use of a domain name in bad faith. According to theICANN Policy, circumstances of bad faith are not limited to the listed ones. The Panel finds that the domain name was registered and used in bad faith based upon thefollowing reasons: The Complainant has trademark registrations for the Chinese words “” in Japanand has begun to use the trademarks in Japan before the creation of the disputed domainname. “” (Mainichi Shimbun), together with “” (Asahi Shimbun) and“” (Yomiuri Shimbun), are appreciated as the three major daily newspapers witha national circulation throughout Japan. These three newspapers, to some extent, are alsofamous in many foreign countries, especially in the Japan’s neighboring countries orregions. Besides the domain name at issue, the Respondent also registered simultaneously, as well as , all of which are thethree famous newspaper publishing companies in Japan. The Panel infers from theRespondent’s behavior that, when making the registration applications, the Respondentclearly knew that “” was one of the major Japanese newspapers. The Chinesecharacter of the disputed domain name is identical to the trademarks “” owned bythe Complainant. By common knowledge, using the Chinese wording “” as thesecond level of a domain name can be a very direct, exact and preferred way to reflect theComplainant’s identity, functions and services offered by the Complainant. In absence ofproof that the Respondent possesses the rights or other legitimate interests in the domain page 7 name in dispute, the Panel believes that the Respondent’s conduct of acquiring and holdingthe domain name [ (BQ—3BV44ZPFMWYIAXQ.COM)] has preventedthe Complainant from reflecting its trademark in a corresponding Chinese domain name. Inaddition, the situation that names for four famous Japanese newspapers were registered asmultilingual domain names by the same Respondent is regarded by the Panel as a fact ofbad faith. For the reasons above, the Panel finds that the Respondent’s registration and use of thedomain name at issue is in bad faith. 7. Decision The Panel concludes (a) that the domain name [ (BQ—3BV44ZPFMWYIAXQ.COM)] is identical to the trademarks owned by the Complainant,(b) that the Respondent has no rights or legitimate interest in the domain name and (c) thatthe Respondent has registered and used the domain name in bad faith. Therefore, the Panelorders that the domain name [ (BQ—3BV44ZPFMWYIAXQ.COM)] betransferred to the Complainant. ______________________ Li Yong Sole Panelist Dated: June 5, 2001

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