WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hisamitsu Pharmaceutical Co., Inc. v. Chang Il Min Case No. D2008-1390 1. The Parties
The Complainant is Hisamitsu Pharmaceutical Co., Inc. of Tosu, Saga, Japan, represented by Y.S. Chang & Associates, Seoul, Republic of Korea.
The Respondent is Chang Il Min of Pohang, Gyeongsangbuk-do, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with HANGANG Systems, Inc. dba D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 11 and 16, 2008, and in hard copy on September 19, 2008. On September 12, 2008, the Center transmitted by email to HANGANG Systems, Inc. dba D a request for registrar verification in connection with the disputed domain name. On September 16, 22, and 29, 2008, HANGANG Systems, Inc. dba D transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2008.
The Center appointed Ilhyung Lee, Keita Sato, and Ho-Hyun Nahm as panelists in this matter on November 28, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel determines that English will be the language of the proceeding, as discussed herein. 4. Factual Background
The Complainant is a Japanese corporation, with its principal place of business at Tosu. A pharmaceutical company, the Complainant is perhaps best known for its “Salonpas” products, sold worldwide. The Complainant received its first registration for the HISAMITSU mark with the Japan Patent Office on July 1974, and has registered over 300 marks that contain the “hisamitsu” term since then. In addition, the Complainant has registered the mark in various countries in Asia, North America, South America, and Europe. In the Republic of Korea, the Complainant has obtained six registrations of marks consisting solely of HISAMITSU, the first on August 13, 1996, and most recently, on December 18, 2006.
The Complainant has also registered various domain names consisting of its mark, including , on October 24, 1996. Currently, the content of the corresponding website is in Japanese text, with a link for an English version.
The Respondent registered the disputed domain name on November 15, 2001. The domain name was originally scheduled to expire on November 15, 2008. In response to the Center's request for verification, the registrar confirmed that the domain name would remain locked during the proceeding. Publicly available records indicate an update on December 15, 2008, and a new expiration date of November 15, 2010. 5. Parties' Contentions A. Complainant
The Complainant contends that English and Korean are alternative languages of the registration agreement, and requests that the language of the proceeding be English.
The Complaint states that: (i) the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith.
The Complainant also notes that in addition to the disputed domain name, the Respondent has registered numerous other domain names that effectively prevent various trademark owners who have rights in their respective names from reflecting their trademarks in the corresponding domain names. The Complaint states that the Respondent profits from some of these domain names by “setting up a pay-per-click arrangement where advertising revenues are paid to the Respondent when a visitor clicks on a search term displayed on these sites.” Complaint at 10. The Complainant contends that the Respondent is “a serial cybersquatter.” Id. B. Respondent
The Respondent did not reply to the Complainant's contentions.
Under paragraphs 5(e) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint. The Panel may also draw appropriate inferences from such default, according to paragraph 14(b) of the Rules. 6. Discussion and Findings
Initially, the Panel must determine the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the registration agreement shall be the language of the administrative proceeding, unless otherwise agreed by the parties. The same provision also states that the determination of the language of the proceeding is “subject to the authority of the Panel . . . , having regard to the circumstances of the administrative proceeding.”
Here, the registrar has confirmed that the language of the registration agreement is Korean. The Center notified both parties of this on September 19, 2008. The Center's notification – in separate English and Korean text – also gave specific instructions to each party regarding the matter of the language of the proceeding. The Center instructed the Complainant to provide, by September 24, 2008, at least one of the following: (i) evidence of an agreement between the parties that the proceeding should be in English; (ii) a Korean translation of the Complaint; or (iii) a request that English be the language of the proceeding, with supporting arguments and material.
To the Respondent, the Center instructed (again, in both English and Korean text):
[I]f the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant's submission replying to this notification, the Respondent is requested to submit these to the Center by September 26, 2008.
Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any argument/supporting materials . . . as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by this date, we will proceed on the basis that you have no objection to the Complainant's request that English be the language of proceedings.
On September 24, 2008, counsel for the Complainant submitted to the Center its “Request for English as the Language of the Proceeding,” with arguments supporting the request. The Respondent did not submit any response regarding the language of the proceeding.
In brief: the Complainant has requested that the proceeding be in English; the Respondent has declined to take part in the proceeding; and, per the Center's notification to the Respondent dated September 19, 2008, the Respondent is deemed to have no objection to proceeding in English, given the failure to respond to the Complainant's request. Considering all the circumstances, the Panel determines that English is the language of this proceeding. A. Identical or Confusingly Similar
There is little question that the Complainant has rights in its mark HISAMITSU. The disputed domain name differs from the Complainant's mark only by the addition of the “.com” top level domain. The Panel concludes that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights.
The Complainant has demonstrated the first element. B. Rights or Legitimate Interests
The Complainant has met its initial burden to make a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the domain name. The burden thus shifts to the Respondent to demonstrate any such right or legitimate interest. The Respondent has defaulted. The Panel is unable to ascertain any evidence that would demonstrate the Respondent's rights or legitimate interests in the domain name, as described paragraph 4(c) of the Policy or otherwise.
The second element is established. C. Registered and Used in Bad Faith
Currently, Internet users who resort to the disputed domain name are taken to a website that displays a profile of a person holding a bucket of paint in one hand and holding a paint brush against a wall with the other, at about face level. To the right of the figure, the phrase “under CONSTRUCTION” appears. The same phrase also appears more prominently to the left of the figure, in Korean, English, and Chinese text.
The Panel, taking direction from the essence of the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, determines that the disputed domain name “has been registered and is being used in bad faith,” given the following circumstances:
1) The Complainant's mark – HISAMITSU – is known worldwide, with registrations in over 150 countries, including the Republic of Korea, where the Respondent has its address of record.
2) It strains credulity to say that the Respondent selected the domain name by chance, or without knowledge of the Complainant and its marks.
3) There is no evidence of the Respondent choosing the domain name for any legitimate reason.
4) The Respondent intentionally registered the domain name , wholly incorporating the Complainant's widely recognized mark for pharmaceutical products.
5) The Respondent has defaulted in this proceeding, declining the opportunity to explain its interest or right in, or use of, the domain name.
6) Seven years after the registration of the domain name, its corresponding website is “under construction.” (The Complainant maintains that the website has been under construction since the date of registration. Complaint at 8.))
7) It is simply impossible for the Panel to conceive of a good faith use of the domain name.
8) It is not possible for the Panel to “conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.” Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131, at 8.
The third element of bad faith is demonstrated. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Ilhyung Lee
Presiding Panelist
Keita Sato
Panelist
Ho-Hyun Nahm
Panelist
Dated: December 12, 2008
Full & Egal Universal Law Academy