WIPO Domain Name Decision D2001-0620 for 産経新聞.com

page 1 WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kabushiki Kaisha Sangyokeizai Shimbunsha v. Jg Kim Case No. D2001-0620 1. The Parties The Complainant is Kabushiki Kaisha Sangyokeizai Shimbunsha (its English name: SankeiShimbun Co., Ltd.), a company incorporated under the laws of Japan, with its principalplace of business at 7-2, Otemachi 1-chome, Chiyoda-ku Tokyo, 100-8077, Japan. The Respondent is a physical person Jg Kim with his contacting address atYangduck2dong Hyundai Apt 401 Masan, Kyungnam 645-492, Korea. 2.The Domain Name and Registrar The domain name in dispute is [ ], which isregistered with the registrar A of 2261 Morello Ave Suite C Pleasant Hill,CA 94523, USA. 3.Procedural History The Center received the Complaint of the Complainant on May 1 and 3, 2001, by email andin hard copy respectively, and received the Amendment to the Complaint by email and inhard copy on May 1 and June 11, 2001. On May 2, 2001, the Center sent to the Complainant the acknowledgement of receipt of theComplaint. The Center sent to the Registrar a request for verification of registration on May 3 and31, 2001. On June 1, 2001, the Registrar confirmed that the domain name in dispute isregistered with A and the Respondent is the current registrant of the domainname. The current status of the disputed domain name is active. On May 24, 2001, the Center received the report on non-delivery of the Compliant fromComplainant. page 2 On May 29 and 30, 2001, the Center received the communications from the Respondentand made the replies accordingly. And the Center received the communication from theComplainant and the Respondent respectively on May 31 and June 1, 2001, and made itscorresponding replies. The Center completed the formal Requirements Compliance Checklist on June 2, 2001. On June 13, 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 June 13, 2001. On June 20 and 21, 2001, The Center received the communications from the Respondentand made the replies accordingly. The Center received the Response submitted by the Respondent by e-mail on July 3, 2001,and in hard copy on July 9, 2001. On July 3, 2001, the Center sent to the Respondent the acknowledgement of receipt of theResponse. On July 3, 6 and 9, there are some communications between the Center and theRespondent. On July 11, 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 and the projecteddecision date. 4. Factual Background The Complainant is a Japanese newspaper publishing company established in 1942, withits principal office in Tokyo, the main offices in Osaka and some foreign correspondents insome cities throughout the world. The Complainant owns trademark rights over the logotype “” in Japan. Thecurrent version of the Complainant’s logotype “” that appeared on theComplainant’s newspapers were registered with Japanese Patent Office as Complainant’strademark on February 8, 1957, and on July 30, 1990, of which trademark registrationexpire on February 8, 2007 and on July 30, 2010 respectively. The trademark above-mentioned is in classes 66 and 26 of the classifications of goods and services underJapanese Trademark Law 1959, which included “ newspaper”. The registered trademark of “ consists of four Chinese characters. The domain name [ ] was created onNovember 9, 2000, according to the search result made by the complainant shown in theAnnex 1 of the Complaint. page 3 5. Parties’ Contentions The Complainant’s contentions are as follows: (1) The Complainant publishes and circulates“”(“Sankei Shimbun”) dailynewspaper everyday for about two million readers in Japan and uses its trademark“” as a logotype on its newspaper which is well known among readers aswell as its trademark. The “” is appreciated as one of major dailynewspapers with a national circulation throughout Japan together with “AsahiShimbun ,” “Yomiuri Shimbun ),” and “Mainichi Shimbun.” The names of Japanese major newspapers, especially Complainant’snewspaper, are also famous in Korea, not only among the intelligentsia but alsoamong ordinary office workers, students and housewives through Korean massmedia’s news reports with regard to news reports in “Sankei Shimbun”. Moreover,the Complainant associates with a Korean newspaper publishing company the KyungHyang Shinmun to provide news in relation to Japan. In Korea, both Hangulalphabets and Chinese characters are used among Korean people. Some educated oraged Koreans can even read Japanese documents that include Chinese characters aswell as Hiragana and Katakana letters of Japanese origin. Therefore, it is notincomprehensible that a Korean who is familiar with the names of Japanesenewspapers plots to prevent Japanese newspaper publishing companies fromregistering corresponding domain names that reflect each company’s trademark. (2) The Complainant plans to acquire the multilingual domain name inChinese 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 been registered somehow by a person named Pilyun Kim whoresides in Korea on November 9, 2000, before the domain name became available bya duly and legitimate procedure in Japan. Pilyun Kim also registered, and , all of which reflect thetrademarks of “ (Asahi Shimbun)”, “ (Yomiuri Shimbun)” and“ (Mainichi Shimbun)” that are three major newspaper publishingcompanies in Japan on the same date of his/her registration of the disputed domainname through the same Registrar. It is quite clear that Pilyun Kim intentionally acquired his/her registrations of thedisputed domain name and some other domain names that are correspondent to well-known trademarks of Japanese major newspaper publishing companies in order towarehouse those domain names without any specific rights or interests in them. Thisindicates Pilyun Kim’s pattern of conduct aimed at preventing trademark owners,including the Complainant, from registering corresponding domain names that reflecteach company’s trademark. (3) The Respondent in this case is not Pilyun Kim who originally acquired theregistration of the disputed domain name. However, the disputed domain name that iscurrently registered by the Respondent is exactly identical to the registered trademark page 4 in which the Complainant has rights. The Respondent should be considered as havingno rights or legitimate interests in respect of the domain name that is subject of theComplaint, because the Respondent resides in Korea where the Complainant hasnever licensed anybody to use the Complainant’s registered trademark. Moreover,the disputed domain name has never been used for five months since it wasregistered by Pilyun Kim, which shows that neither Pilyun Kim nor the Respondenthas need to use and register the disputed domain name. The Respondent succeeded to the registrant of the disputed domain name fromPilyun Kim by March 7, 2001, after Pilyun Kim’s receipt of the copy of a Complaintthat was filed with WIPO’s arbitration and mediation center by Kabushiki KaishaMainichi Shimbunsha (English name: The Mainichi Newspapers, hereinafter“Mainichi”) that claimed for transferring that reflects its registeredtrademarks from Pilyun Kim. In the Complaint for the pending case betweenMainichi and Pilyun Kim (case number: D2001-0307), Mainichi argues that, thesimultaneous registration of four domain names that all reflect the trademarks ofJapanese major companies in the same industry (newspaper publishing) by PilyunKim clearly shows Pilyun Kim’s intention with bad faith to prevent the legitimatetrademark holders from registering domain names that reflect their respectivetrademarks. Therefore, the Complainant believes that by March 7, 2001 when theRespondent succeeded to the registrant of the disputed domain name herein fromPilyun Kim, the Respondent and Pilyun Kim had recognized that the registration of could be transferred to Mainichi by an Administrative Panel’sdecision; and the disputed domain name could be also transferred to the holder of theregistered trademark corresponding to when the trademark holderwould file a Complaint with a dispute-resolution service provider approved byICANN. Consequently, it is quite likely that the Respondent is another cyber squatterwho conspires with Pilyun Kim, or a nominal party who substantially helps a truecyber squatter behind to camouflage the Respondent has a legitimate interests inrespect of the disputed domain name. It also supports the above that Pilyun Kim hadnever used the disputed domain name for four months after his/her registration.However, by March 8, 2001, immediately after s/he received a copy of the Complaintfor the case with regard to from Mainichi, s/he also transferred twoother registered domain names ( and ) to twodifferent persons. It can be inferred from the Respondent’s succession of the disputed domain namefrom a registrant who apparently acquired the registration with bad faith that theRespondent has no rights or legitimate interests in respect of the disputed domainname which has been registered by the Respondent in bad faith. The Respondent’s contentions are as follows: (1) The disputed domain name consists of four Chinese characters,among which, “” means news/newspapers and “” means the industry andeconomy. Every news / news paper company in Chinese affected countries uses“” after their company names. “” is also the widely used initialized genericword which anyone cannot claims to have an exclusive right of it. page 5 (2) The complainant said he uses its trademark “” as a logotype on itsnewspaper which is well known among readers as well as its trademark. TheRespondent has never seen the Complainant’s trade mark and can not accept that thegraphical type of their trade mark is not only identical and but also similar to thedomain name . The complainant said “”(Sankei Shimbun) is appreciated as one of majordaily newspapers with a national circulation throughout Japan together. TheRespondent never read the Complainant’s newspapers and does not know that it is amajor one or not. The Respondent has never heard that the complainant is famous inKorean and even never seen the complainant’s newspapers in Korea, and also nevermet any guy to read the paper not only in Korea but also outside of Japan. In the siteof The Kyung Hyang Shinmun, there is no notice that The Kyung Hyang Shinmunhas any relationship with the Japanese complainants. (3) The Respondent has ordered and made the payment to Pilyun Kim who told theRespondent that he had an account for pre-registration for multilingual domainnames at A. Since the Respondent’s ordered domain was successfully registered, the Respondent have asked many times to transfer thisdomain to a Korean registrar, but Pilyun Kim explained to the Respondent that thedomains transfer between registrars have not been approved by Verisign, and hecould not transfer this domain to the Respondent. That is the reason why the disputeddomain name is still on the A’s serve. Though the Respondent doesnot like to think that in the case he will be defeated, but, if it happens, theRespondent have made the notice to Pilyun Kim that he will make a big claim tohim. (4) The disputed domain name is surely not identical to the Complainant’s registeredtrademark and even not similar to its roughly graphicrized or painted mark. Thecomplainant’s company is a Japanese local company and the right they insistedshould be limited in Japan. The complainant cannot insist their claims in Koreabecause they do not have any legal right in Korea. The Chinese wording of thedisputed domain name is very widely used generic initials in Korea,Chinese, Japanese and Chinese culturally affected countries, no one cannot insist thatthe Respondent should not have the right over the wording. Up to now, no one canuse the multilingual domain name as an official Internet address. Only for sometesting purposes, they can be used a forwarded one. (5) Based on the domain name was not registered or acquiredprimarily for the purpose of selling, renting, or otherwise transferring the domainname registration to the Complainant, as the alleged owner of the trademark orservice mark, or to a competitor of Complainant, for valuable consideration in excessof the Respondent’s out-of-pocket costs directly related to the domain name, theRespondent has never tried to sell this domain not only to the complainant but alsoanybody in the world because the Respondent planed and plans for the use of hisbusiness purpose. The domain name was not registered in order to preventComplainant from reflecting his mark in a corresponding domain name and, inconnection therewith, the Respondent has not engaged in a pattern of such conduct.The Respondent did not register the domain name in an intentional attempt to attractfor commercial gain. The Respondent has never done any harmful activities to make page 6 the complainant to lose any profits. And also the complainant could not show whatthey lost from the Respondent’s having this domain. The Respondent is making alegitimate non-commercial or fair use of the domain name, without intent forcommercial gain misleadingly to divert consumers or to tarnish the trademark(s) orservice mark(s) at issue. This domain name will be used written in Korean andChinese Language, and the complainant’s customers using Japanese windows willnot be confused. 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 [ ]. The Panelfinds that the characters of this domain name “” are confusingly similar to theregistered trademark held by the Complainant in Japan. It is true that the characters of thedisputed domain name are slightly different in shape with the characters of the trademarkof the Complainant, which has been pointed out by the Respondent in his response.However, the panel finds that the difference is not significant. From Chinese users’ point ofview, the two words have just same meaning and same pronunciation. In fact, they areinterchangeable. In addition, the panel does not agree with the Respondent’s contentionthat “” is widely used initialized generic word which anyone cannot claims to have anexclusive right of it. The word “”is a coined word rather than a generic one.Therefore the Complainant have exclusive right on it. The panel has noticed theRespondent’s contention that the complainant’s company is a Japanese local company andthe right they insisted should be limited in Japan. The complainant cannot insist theirclaims in Korea because they do not have any legal right in Korea. The panel does notsupport this contention because ICANN Policy does not require any complainants to own“international trademark right” or trademark right of any particular country in order forthem to make claims based on the Policy. Keeping the above in mind, the Panel believesthat 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. Onthe other hand, the Complainant clearly declared that he has never licensed anybody to usehis registered trademarks in Korea. As such, the Panel believes that the Respondent has norights or legitimate interests with respect to the disputed domain name. page 7 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 registration for the Chinese words “” in Japanand has begun to use the trademark in Japan before the creation of the disputed domainname. “” (Sankei Shimbun), together with “” (Mainichi Shimbun),“” (Asahi Shimbun) and “” (Yomiuri Shimbun), are appreciated as thefour major daily newspapers with a national circulation throughout Japan. Thesenewspapers, to some extent, are also famous in many foreign countries, especially in theJapan’s neighboring countries or regions. Besides the domain name at issue, the formerregistrant of the disputed domain name Pilyun Kim also registered simultaneously, as well as , all of which are thethree famous newspaper publishing companies in Japan. The Panel infers from PilyunKim’s behavior that, when making the registration applications, he clearly knew that“” was one of the major Japanese newspapers and further believes that PilyunKim registered and used the disputed domain name in bad faith. The Respondent claimed that he obtained the disputed domain name from Pilyun Kim bytransfer. However, it is a common sense that, just like the transfer of other kinds ofintellectual properties, when getting the domain name by transfer from others, thetransferee has been under the risks that his right over the domain name may be of a non-stable nature. The subject matter of the transfer (the disputed domain name) may probablyinfringe upon the legitimate rights of others. The Respondent should have known this andtake the corresponding responsibility arising from the transfer. Moreover, the Respondentcould not furnish evidence to prove that he acquired and held the disputed domain name bygood reasons. Considering the influence of the newspaper “” in Japan and itsneighboring countries, it is inferred that the Respondent knew the name of the newspapercompany. The Chinese characters of the disputed domain name are confusingly similar tothe trademarks “” owned by the Complainant. By common knowledge, using theChinese wording “” as the second level of a domain name can be a very direct,exact and preferred way to reflect the Complainant’s identity, functions and servicesoffered by the Complainant. In absence of proof that the Respondent possesses the rights orother legitimate interests in the domain name in dispute, the Panel believes that theRespondent’s conduct of acquiring and holding the domain name [ ] has prevented the Complainant from reflecting its trademark ina corresponding Chinese domain name. For the reasons above, the Panel finds that the registration and use of the domain name atissue is in bad faith. page 8 7. Decision The Panel concludes (a) that the domain name [ ] is identical to the trademark owned by the Complainant,(b) that the Respondent has no rights or legitimate interest in the domain name and (c) thatthe domain name at issue has registered and used in bad faith. Therefore, pursuant toparagraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name[ ] be transferred to the Complainant. ______________________ Li Yong Sole Panelist Dated: July 25, 2001

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