WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tokyu Corporation v. Jeongyong Cho Case No. D2008-1407 1. The Parties
The complainant is Tokyu Corporation of Tokyo, Japan (“Complainant”).
The respondent is Jeongyong Cho of Gwangju, Republic of Korea (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Korea Information Certificate Authority Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 16, 2008 and in hard copy on September 19, 2008.
On September 16, 2008, the Center transmitted to Korea Information Certificate Authority Inc. a request for registrar verification in connection with the Domain Name. On September 17, 2008, Korea Information Certificate Authority, Inc. transmitted to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details, and informing that the language of the applicable registration agreement is Korean.
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 proceedings commenced on October 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for response was October 21, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 22, 2008.
The Center appointed Chunghwan Choi, Masato Dogauchi, and Jung Wook Cho as panelists in this matter on November 27, 2008. Each member of the Panel finds that it was properly constituted. 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. 4. Factual Background
The Complainant, the Tokyu Group is one of the leading enterprise groups in Japan, comprising 287 companies and 9 non-profit corporations (as of the end of March 2007), including 11 public limited companies (as of the end of March 2007). The Tokyu Group is engaged in a wide rage of business such as transportation, real estate, retail, leisure services, and hotel/hospitality. The Tokyu Group operates a wide variety of hotel businesses, and is expanding in the various forms of hotels, as symbolized by the opening of new “The Capitol Hotel Tokyu.”
The Domain Name has been used for a website with several links (e.g., “Tokyo Japan Hotels”, “Tokyo Travel”, “Istanbul Hotels”, etc.) under the header of “. Please contact us for more information.” 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the mark TOKYU, which is the Complainant's registered trademark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; that the Respondent has no license or permission to use the name and mark TOKYU by the Complainant; that the Respondent, not commonly known by the Domain Name, does not do business under the name and mark TOKYU; and that the Respondent's use of the Domain Name without providing any original products or services on the website demonstrates the intention of renting or transferring the Domain Name to the Tokyu Group or its competitor, proves the Respondent's bad faith registration and use of the Domain Name.
The Complainant requests that the Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Language of Proceeding
The registrar confirmed that the language of the registration agreement for the Domain Name is Korean. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant initially filed its Complaint in English. On September 22, 2008, the Center issued a notice regarding the applicable language of proceeding. The Complainant then submitted a request that English be the language of the proceeding, to which the Respondent has not replied.
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has discretion to decide otherwise, having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time, and costs. It is important that the language finally chosen by the Panel for the proceeding is not prejudicial to the parties in their ability to articulate the arguments for the case. International Data Group, Inc. v. Lingjun,WIPO Case No. D2004-0398.
The Complainant, upon being notified by the Center that the language of the registration agreement is Korean, has submitted a request that English be the language of the proceeding, to which the Respondent has not replied. Thus, given the provided submissions and circumstances of this case, the Center would accept the Complaint as filed in English; accept a Response in either English or Korean; and appoint a panel familiar with the languages mentioned above, if available, with discretion as to any final determination as to the language of proceeding a matter for the panel on appointment.
In light of the fact that the Respondent has been notified of the Complaint in Korean as well as English and that the Respondent has chosen not to participate in the proceeding, the Panel is satisfied that, inter alia, taking these circumstances into consideration, the Panel may render its decision in English and that this may be considered fair to both parties in the circumstances of this case. Review of Legal Element
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must establish that each of the three following elements is satisfied:
1. the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. the Domain Name has been registered and is being used in bad faith.
These requirements will be considered in turn. A. Identical or Confusingly Similar to a Mark in which the Complainant has Rights
The Panel recognizes that the Complainant is the owner of registered trademarks of TOKYU in English, 東急 in Japanese, and CAPITOL TOKYU HOTEL (キャピタル東急ホテル). The Complainant has continuously used the above marks and has offered a wide variety of products and services in transportation, real estate, retailing, and hotels, etc., and the trademarks TOKYU and 東急 are widely known to customers worldwide as well as in Japan. The Panel is satisfied on the evidence that the Complainant has rights in the marks TOKYU and CAPITOL TOKYU HOTEL.
The Panel finds that the Domain Name is confusingly similar to the marks TOKYU and CAPITOL TOKYU HOTEL. If the top level domain (“.com”) is eliminated from the Domain Name, the main part becomes “capitoltokyu.” If the term “キャピタル東急,” which is a part of the Complainant's registered trademark “キャピタル東急ホテル,” is written in Roman letters, it inevitably becomes identical to “capitoltokyu.” In addition, with regard to a character string “tokyu,” which is a major part of the main part of the Domain Name “capitoltokyu,” the only difference between such character string and the Complainant's registered trademark TOKYU is whether they are written in capital letters or in small letters. Therefore, it can be said a domain name including a character string “tokyu” as its major part suggests that there is a capital or a business tie-up between the Respondent and the Complainant; i.e., it is confusingly similar to TOKYU or 東急 for customers.
The Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests
The Respondent is neither an authorized dealer nor a distributor of Tokyu Group's products or services and it has not been licensed or otherwise been given permission to use the name and mark TOKYU by the Complainant. The Panel is satisfied by the Complainant's unchallenged evidence that the Domain Name has been used for a website simply with several items listed as links relating to hotel reservation in contemplation with the Complainant. The Respondent does not use the Domain Name in connection with a bona fide offering of goods and services within the meaning of the Policy, paragraph 4(c)(i) because the Respondent does not use the Domain Name to sell its own wares and services, but merely provided links which trade on the Complainant's mark. Based on the case file, the Panel is of the view that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith
The trademark TOKYU is widely known. It has been used world wide for many years and is one of the well-known trademarks for hotel and resort business. Therefore, the Respondent most likely knew of the trademark prior to registering the Domain Name. This finding of the Panel is also evidenced by the fact that the Respondent has utilized the Domain Name for a website to search and introduce the hotels located in Japan. The Panel believes that the Respondent has intention of causing confusion with respect to the source of the products or services in the foregoing website, as well as the sponsorship and capital or business tie-up with the Complainant and the Tokyu Group, leading customers to believe that the Respondent is affiliated with the Complaint, and gaining commercial profits by using the Domain Name. Such use of a domain name confusingly similar to a complainant's mark for a web site amount to the usage in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions: see e.g., Spadel S.A. v. Peter Kisters,WIPO Case No. D2000-0526; T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066; Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365.
The Panel concludes that the Domain Name was registered and is being used in bad faith. 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.
Chunghwan Choi
Presiding Panelist
Masato Dogauchi
Panelist
Jung Wook Cho
Panelist
Dated: December 28, 2008
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