Sankyo Co., Ltd. v. Zhu Jiajun

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sankyo Co., Ltd. v. Zhu Jiajun

Case No. D2000-1791

Also in PDF 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 <ŽO‹¤.com>, which domain

name is registered with OnlineNic, Inc., 3435 Wilshire Blvd., Los Angeles,

California, 90010, U.S.A., d/b/a China-channel.com, 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 fax

and 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). An acknowledgment

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 the registrar, OnlineNic, Inc. (Online Nic) requesting it to: (1) confirm that a copy of

the Complaint was sent to the registrar by the Complainant, as required by WIPO

Supplemental 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 the domain

name; (4) provide the full contact details (i.e., postal address(es), telephone

number(s), facsimile number(s), e-mail address(es)) available in the

registrar�fs Whois database for the registrant of the disputed domain name, the

technical contact, the administrative contact and the billing contact; (5) confirm

that the Uniform Domain Name Dispute Resolution Policy (the Policy)

applies to the domain name; (6) indicate the current status of the domain name;

(7) indicate the language of the registration agreement for the domain name.

On January 16, 2001, OnlineNic confirmed

by reply e-mail that the domain name <ŽO‹¤.com> (�gbq—3bhasulr.com�h in

row-based ASCII Compatible Encoding) was registered

with OnlineNic, that the Respondent, Zhu

Jiajun, was the current registrant of the domain name,

and that the registration agreement for the domain name was in English. 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 the Policy to the domain name at issue.

In

accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute

Resolution Policy (the Rules) and

Paragraph 5 of the Supplemental Rules, the Center has verified that the

Complaint satisfies the formal requirements of the Policy, Rules and

Supplemental Rules. A Formal Requirements Compliance

Checklist was completed by the assigned WIPO Center Case Administrator on

January 20, 2001. The Panel has independently determined and agrees with the

assessment of the Center that the Complaint is in formal compliance with the

requirements of the Policy, the Rules, and the Supplemental Rules. Payment

in the required amount to the Center has been made by the Complainant.

No formal deficiencies having been recorded, on January 23, 2001,

a Notification of Complaint and Commencement of Administrative Proceeding (the

�gCommencement Notification�h) was transmitted to the Respondent (with copies to

the Complainant, OnlineNic

and ICANN), setting a deadline of February 11, 2001,

by which the Respondent could file a Response to the Complaint. The

Commencement Notification was transmitted to the Respondent by e-mail,

facsimile, and post/courier in accordance with the contact details indicated in

the Complaint and specified in OnlineNic�fs

Whois confirmation.

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�fs designation of

a single panelist (but without prejudice to any election to be made by the

Respondent) the Center invited Sang Jo JONG to serve as a

panelist in Case No. D2000-1791, and transmitted to him a Statement of

Acceptance and Request for Declaration of Impartiality and Independence.

Having received Sang Jo JONG�fs Statement of Acceptance and Declaration

of Impartiality and Independence, the WIPO Center transmitted to the parties,

on

February 22, 2001, a Notification of Appointment of Administrative

Panel and Projected Decision Date. The Projected Decision Date was March 7,

2001. The Sole Panelist finds that

the Administrative Panel was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules.

To clarify some issues which were raised by the Response and the

Reply to the Response, the Administrative Panel Procedural Order No.1

("Panel Order") was issued on March 6, 2001. The Panel Order requests

the Parties to answer some questions regarding infringement of Japanese

Trademark Law, the existence of the Sankyo Art Center, registration of multiple

domain names, and the distinctiveness of the Complainant's mark "ŽO‹¤." In accordance with the Panel Order, both parties made

submissions by March 13, 2001, the last date on which the parties were

requested to file their submissions.

Consequently, delivery of this decision has been delayed whilst these

submissions have been considered by the Panel.

The language

of the administrative proceeding is English, being the language of the

registration agreement.

4. Factual

Background

The trademark upon which the Complaint is based is "ŽO‹¤ (SANKYO)" registered and being in actual use

in the Complainant�fs name in a number of countries including Japan, Peoples

Republic of China and the U.S.A. Copies of trademark registrations, annexed to

the Complaint, comprises details of the Complainant�fs trademarks registrations in

relevant countries. Suffice to say the trademark "ŽO‹¤

(SANKYO)" is registered in relevant jurisdictions, and in most cases, the

trademark is well established over a considerable period of time.

The contested domain name <ŽO‹¤.com>

was registered on November 10, 2000. It is clear from the Registrar's verification that the status

of the contested domain name was "on hold."

The disputed domain name (ŽO‹¤.com) is a so-called Multilingual Domain Name (MDN)

originated by VeriSign Global Regisry Services as a Testbed to register domain

names in non-English language character sets in .com, .net, and .org. By the

nature of its Testbed status, MDN registration is not fully functional as

of the date of the Complaint being filed. Instead, the Respondent has opened

a website at http://www.san-gong.com (san-gong is the pronunciation of ŽO‹¤

in Chinese) for "Sankyo Art Salon" for which the Respondent is arguing

to have initially registered ŽO‹¤.com.

5. Parties�fContentions

A. The Complainant

Identicality or confusing

similarity as between the domain name and trade marks

The Complainant contends that the domain name <ŽO‹¤.com> is exactly identical with the Complainant,

Sankyo Co., Ltd.�fs trademark �gŽO‹¤�h which is

registered and used extensively in Japan, China, and the U.S.A..

Respondent�fs rights or

legitimate interests in the domain name

The Complainant contends that the Respondent does not have any

right or interests in the domain name, taking into account the fact that the

Respondent is not operating an active website under the domain name <ŽO‹¤.com> as of the date of the Complaint being

filed. In addition, the

Complainant points out that the Respondent, as an individual, is not identified

by the name ŽO‹¤ and, also, that any

commercial use of ŽO‹¤ (SANKYO) by the Respondent

would contravene the Japanese Trademark Law and/or the Unfair Competition

Prevention Law.

The Complainant contends that registration of multiple domain

names similar to other well-known trade names is inconsistent with an intent to

engage in any bona fide activity to use the domain name <ŽO‹¤.com>. For example, the Respondent has

registered other multilingual domain names like <‰––ì‹`.com>

and <“c•Ó.com> each of 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.

(‰––ì‹`�»–òŠ”Ž®‰ïŽÐShionogi

Seiyaku Kabushiki Kaisha) and Tanabe Seiyaku Co., Ltd. (“c•Ó�»–òŠ”Ž®‰ïŽÐTanabe Seiyaku Kabushiki Kaisha).

Bad faith on the part of

the Respondent

According to the Complaint, the Complainant's

trademark �gŽO‹¤�h

is so famous in Japan, China and the U.S.A. that the Respondent was undoubtedly

aware of the Complainant�fs fame at the time it registered the domain name. The

Respondent's awareness is also ascertained by the Respondent's registration of

several multilingual domain names which are identical and/or confusingly

similar to the well known trade names and registered trademarks of

pharmaceutical companies.

The Respondent's registration and use of the

domain name <ŽO‹¤.com>

in bad faith is evidenced by the Respondent's knowledge of the Complainant's

rights in the mark ŽO‹¤

(SANKYO) and its preventing the Complainant from using domain name that

incorporates its famous mark ŽO‹¤ (SANKYO) written in symbolic characters of

Japanese kanji which has a strong image as the indicator of the Complainant's

business and products.

In addition, registration of many multilingual

domain names which are identical or confusingly similar to well known and/or

famous trade names and trademarks used by prominent companies in the same

pharmaceutical manufacturing industry indicates the Respondent's pattern of

conduct aimed at preventing owners of such trademarks, including the

Complainant, from using its own trademark and/or the most essential part

thereof, in a corresponding domain name (the Policy 4 (b)(ii)).

The Complainant has used the mark ŽO‹¤ (SANKYO) substantially

and continuously for more than one hundred years and spent a substantial amount

of money every year on advertising its products and the brand image of the

mark. The Respondent's

registration and use of domain name <ŽO‹¤.com> could disrupt

the Complainant's business and cause substantial confusion among the public

trying to reach the website of the Complainant and thereby cause serious damage

to the Complainant and to the good will associated with the Complainant's brand

ŽO‹¤ (SANKYO). The

Respondent's awareness of the prominence and fame of the Complainant's mark ŽO‹¤ (SANKYO) and the

confusion among the public to be caused, further infers that the Respondent

registered the domain name ŽO‹¤ (SANKYO) in bad faith either for the purpose of

selling or otherwise transferring domain name registration to the Complainant

in excess of the Respondent's out-of-pocket costs directly related to the

domain name (the Policy 4 b (i)).

B. Respondent

The Respondent contends that he has rights and legitimate interests in the domain

name on the basis of the fact that he has registered ŽO‹¤.com for the official

and non-commercial website of an organization named "Sankyo Art

Salon", which the Respondent participated in founding. Especially, the

Respondent points out that ŽO‹¤ comprises two Japanese kanji, ŽO (meaning

"three") and ‹¤(meaning

"together") and, thus, that the term ŽO‹¤ is descriptive in

Japanese. ŽO‹¤

in Chinese has the same meaning. The Respondent contends that "Sankyo Art Salon,"

for which the Respondent contends to have registered the disputed domain name,

is designed for an art presentation mode that combines three artistic forms of

literature, music and painting together. Since MDN cannot function properly to

this day, the Respondent has registered a domain name san-gong.com (san-gong is the

pronunciation of ŽO‹¤

in Chinese) and is constructing a website under this domain name. See http://www.san-gong.com. Accordingly, the

Respondent contends that, just as many other Japanese firms use the name ŽO‹¤ in their business, the

Respondent has the equal rights to use this name as the domain name for a

non-commercial website.

With regard to bad faith, the Respondent denies

all the allegations which were made by the Complainant. Especially, the

Respondent rebutted the Complainant's allegation that the Respondent's

registration of multilingual domain names like <‰––ì‹`.com> and <“c•Ó.com> in addition to the

disputed domain name, which are identical or confusingly similar to well known

and/or famous trade names and trademarks of pharmaceutical companies, indicates

the Respondent's bad faith by showing that <shionogi.com>(corresponding

to <‰––ì‹`.com>) and <tanabe.com>

(corresponding to <“c•Ó.com>) have all been registered not by the pharmaceutical

companies but by others.

6. Discussion and Findings

A question was raised by the Respondent with regard to the

applicability of the Policy to the domain name at issue. The Panel noticed that

the registration of the domain name is in the .com space, to which the Policy

applies. The Registration

Agreement ("Agreement") concluded by the Respondent and the Registrar

makes it clear that the holder of the multilingual domain name is bound by the

Policy which is incorporated into the Agreement by reference and made a part of

the Agreement. See Section 5 of the Agreement. The Policy is designed to

balance conflicting interests of an owner of a trademark and a registrant of a

domain name, a source identifier affecting Internet traffic. Multilingual domain

names also function as a source identifier and affect Internet 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 that the 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 the following:

(1) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and,

(2) that the Respondent has no rights to or legitimate interests in the domain name 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 <ŽO‹¤.com>, the Panel finds that the domain name at issue is

identical to the Complainant's trademark and trade name �gŽO‹¤�h. As to the insignificance

of the generic top-level domain in determining identicality or confusing similarity

as between the domain name and trademark at issue, see VAT Holding AG v Vat.com,

Case No. D2000-0607. Furthermore, the

Respondent has not contested that the domain name <ŽO‹¤.com> is identical

to or confusingly similar with the Complainant's trademark.

Respondent�fs rights or

legitimate interests in the domain name

It is not contested that the Complainant has not authorized the

Respondent to use the trademark "ŽO‹¤".

Neither does the Respondent have the rights to the trademark "ŽO‹¤" in any class of goods or services in Japan,

China or the United States of America, nor does the Respondent's name have any

relationship with "ŽO‹¤".

Based upon the above uncontested facts, the Complainant contends that

the Respondent has no rights or legitimate interests in respect of the domain

name at issue. The Respondent denies the Complainant's contention by pointing

out some degree of descriptiveness of the Complainant's trademark "ŽO‹¤" comprising two Japanese kanji, ŽO(meaning "three") and ‹¤(meaning "together") and argues that the

Respondent has the equal rights to use the term "ŽO‹¤"

as the domain name.

Although the Complainant's trademark "ŽO‹¤" comprising two Japanese

kanji may, by its nature of a hieroglyph, convey its own meaning "three

together", the very meaning may not be regarded as describing the Complainant's

products or services. Nor does the term "ŽO‹¤" appear in ‘厫—Ñ�idaijirin�jdictionary/encyclopedia

(the explanation of the dictionary states that this is mega dictionary-encyclopedia

which contains 233000 words from old Japanese to fresh modern Japanese of all

fields.). As a matter of principle, registration of a mark is prima facie evidence

of validity, which creates a rebuttable presumption that the mark is distinctive.

The Respondent has the burden of refuting this presumption. See, e.g., L.L.C.

v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case

No. D2000-0047. The Respondent has, however, failed to refute this presumption.

The panel finds that there is no substantial evidence showing that the term

"ŽO‹¤" 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

has equal rights to use the term "ŽO‹¤" merely by registering it as

the domain name. See Barney�fs Inc. v. BNY Bulletin Board, Case

No. D2000-0059.

The Respondent contends that, since more than 30 firms other than the Complainant

use the term "ŽO‹¤" in their business, the Respondent has equal rights

to use the term as a domain name. It may be arguable that any of the firms using

the term "ŽO‹¤" could argue that they have a right or legitimate interest

in respect of domain names containing the same term. It is not clear to the

Panel, however, whether the Respondent is such a firm 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, Worldcup2002.com, W Co., and Worldcup

2002, Case No. D2000-0034.

The Respondent may still prove his rights or legitimate interests in

respect of the domain name by demonstrating any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent's use of, or

demonstrable preparations to use, the domain name or a name corresponding to

the 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 been

commonly known by the domain name, even if the Respondent has acquired no

trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to

tarnish the trademark or service mark at issue.

With regard to the first circumstance of the Respondent's use of the domain

name in connection with a bona fide offering of goods or services, the Complainant

raises a question whether there is any bona fide activity by the Respondent

at all. The Complainant's question on a bona fide activity is based upon the

fact that the Respondent has also registered other multilingual domain names

like <‰––ì‹`.com> and <“c•Ó.com> as well. It appears to the Panel, however,

that lack of a bona fide activity for the purpose of Paragraph 4(c)(i) of the

Policy is different from bad faith for the purpose of Paragraph 4(b) of the

Policy. Just as an owner of multiple trademarks may use his/her marks in connection

with a bona fide offering of goods or services, so a registrant of multiple

domain names may also use his/her domain names in connection with a bona fide

activity. As an example of registration of multiple domain names which were

found to have been used in connection with bona fide activities, see Port of

Helsinki v. Paragon International Projects Ltd., Case

No. D2001-0002. Registration by the Respondent of multiple domain names

may, however, only affect the Panel in finding the Respondent's bad faith, which

will be discussed later.

It is not contested that the Respondent has not been commonly known by

the domain name.

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 allegedly non-commercial activity, under a domain name "san-gong.com".

While the Respondent contends that the Salon would hold non-commercial activities,

it is not clear to the Panel how the Salon's activities are to be financed.

If the Respondent registered the domain name <ŽO‹¤.com> with the fame of

the Complainant's trademark in his mind, primarily to stimulate interest in

the Salon but also for the purpose of generating revenues from the advertising

banners on a relevant site, the use of the domain name by the Respondent could

not be found as non-commercial. If the Respondent registered the domain name

with the intention of diverting to his site Internet traffic intended for the

Complainant so that the Salon would benefit from such diversion of Internet

traffic in any 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, Case No. D2000-1698.

Assuming that the use of the domain name or the Salon's activities do not generate

any revenues or profits, the Respondent could not show a legitimate interest

in the disputed domain name if he did not submit to the Panel any details on

the Salon or any other activities for which the Respondent allegedly registered

the disputed domain name. Respondents did not state even the name of the Salon's

founding members. The only plausible conclusion to draw from the evidence presented

to the Panel is that the Respondent intended to warehouse the domain name. Even

in accordance with the Administrative Panel Procedural Order No.1 requesting

the Respondent to submit detailed statement on the Salon, the Respondent simply

reiterated that the Salon was a plan proposed by the Respondent. Evaluation

of all of the evidence leads the Panel to the conclusion that any proposed activity

of the Salon was superficial and not a legitimate or fair use of the domain

name. See Yahoo! Inc., v. Silicon City and Osama Al-Ayoub, Case

No. D2000-1711

Accordingly, the Panel finds that the Respondent does not have any

rights or legitimate interests in respect of the domain name <ŽO‹¤.com>.

Bad faith on the part of

the Respondent

Paragraph

4(b) of the Policy provides that the following circumstances, if found by the

Panel to be present, shall be evidence of the registration and use of a domain

name in bad faith:

(i) circumstances indicating that the Respondent has registered or the Respondent has acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant who is the owner

of the trademark or service mark or to a competitor of the Complainant, for

valuable consideration in excess of

documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of

disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract,

for commercial gain, Internet users to the Respondent's web site or other

on-line location, by creating a likelihood of confusion with the Complainant's

mark as to the source, sponsorship, affiliation, or endorsement of the

Respondent's web site or location or of a product or service on the Respondent's

web site or location.

The Complainant contends the Respondent's bad faith by pointing

out the Respondent's registration of multiple domain names like <‰––ì‹`.com> and <“c•Ó.com>

in addition to <ŽO‹¤.com> each of which is,

respectively, identical to the essential and distinctive part of the well-known

trade name or trademarks of other pharmaceutical manufacturing companies. As panelists

are developing a jurisprudence on the Policy on a case-by-case basis by

offering interpretations of the Policy such as the meaning of bad faith with

regard to registration of multiple domain names, this Panel issued the Administrative

Panel Procedural Order No.1 requesting the Respondent to answer the question

what rights or legitimate interests the Respondent has in the domain name. In

his reply, however, the Respondent merely reiterates his existing position that

the Respondent�fs registration of multiple domain names like <“c•Ó.com> and <‰––ì‹`.com> should not affect

the Panel in the current case on <ŽO‹¤.com>.

It can be inferred from the registration of a number of domain names incorporating

well-known trade names or trademarks, first of all, that the Respondent has

intended to acquire and warehouse the domain names without any specific rights

or legitimate interests in them. The effect of this warehousing is to give the

Respondent a possible chance to sell those domain names for profit (the Policy

4 (b)(i)). See Nabisco Brands Company v. The Patron Group, Inc. Case

No. D2000-0032. The warehousing of domain names also indicates the Respondent's

pattern of conduct aimed at preventing trademark owners, including the Complainant,

from using its own trademark and/or the most essential part thereof, in a corresponding

domain name (the Policy 4 (b)(ii)). See Toyota 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 de Football

Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, Case

No. D2000-0034.

Accordingly, the Panel finds that the domain name <ŽO‹¤.com> was registered

and is used by the Respondent in bad faith.

7. Decision

In light of the foregoing, the Panel decides that the Complainant has proven each

of the three elements in paragraph 4(a) of the Policy in relation to the domain

name <ŽO‹¤.com>.

Pursuant to paragraph 4 of the Policy and paragraph 15 of the Rules, the Panel requires

that the Registrar, OnlineNic, Inc, transfer the domain name <ŽO‹¤.com>

to the Complainant, Sankyo Co., Ltd.

Sang Jo JONG

Sole Panelist

Dated: March 23, 2001