Kabushiki Kaisha Mainichi Shimbunsha v. Pilyun Kim

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Mainichi

Shimbunsha v. Pilyun Kim

Case No. D2001-0307

See Also PDF File: D2001-0307

1. The Parties

The Complainant

is Kabushiki Kaisha Mainichi Shimbunsha (its English name: The Mainichi Newspapers),

a company incorporated

under the laws of Japan, with its principal place of business at 1-1,

The Respondent is a physical person Pilyun Kim with his contacting address at Punghodongwoosung

Apt 116-103 Jinhae, Kyungnam 645-320, Korea.

2. The Domain Name and Registrar

The domain name in dispute is [<ËèÆü¿·Ê¹.com> (BQ—3BV44ZPFMWYIAXQ.COM)], which is registered with the

registrar Alldomains.com of 2261 Morello Ave Suite C Pleasant Hill, CA 94523,

USA.

3. Procedural History

The Center received the Complaint of the Complainant

on March 2 and 6, 2001 by email and in hard copy respectively.

On March 7, 2001, the Center sent to the Complainant

the acknowledgement of receipt of the 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 in dispute is registered with Alldomains.com and

the Respondent is the current registrant of the domain name. The current status

of the disputed domain name is on hold awaiting response 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.

On April 18, 2001, the Center received the

communication from the Respondent and made the reply accordingly at the same

day.

On April 20, 2001, the Center sent to the Respondent

the Notification of Complaint and Commencement of the Administrative

Proceeding. This notification was sent by the methods required under paragraph

2(a) of the Rules. The formal date of the commencement of this administrative

proceeding is April 20, 2001.

The Center received the Response submitted by the

Respondent by e-mail on May 9, 2001 and in hard copy on May 14 and 21, 2001.

On May 9 and 10, 2001, the Center sent to the Respondent the acknowledgement of

receipt of the Response.

On May 22, 2001, after receiving a completed and

signed Statement of Acceptance and Declaration of Impartiality and

Independence, the Center notified the parties of the appointment of a

single-member panel consisting of Mr. Li Yong.

4. Factual Background

The Complainant is a Japanese newspaper publishing

company established in 1872, with its principal office in Tokyo and other main

offices and branch offices in other cities of Japan as well as some foreign

correspondents in some cities throughout the world.

The Complainant owns trademark rights over the

logotype ¡ÈËèÆü¿·Ê¹¡É in Japan. The current version

of the Complainant¡Çs logotypes ¡ÈËèÆü¿·Ê¹¡É

that appeared on the Complainant¡Çs newspapers were registered with Japanese

Patent Office as Complainant¡Çs trademarks on June 29, 1994 and on November 30,

1994, of which trademark registrations expire 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 Japanese Trademark Law 1959, which

included ¡Ènewspapers¡É and ¡Èprinted matters¡É.

The registered trademark of ¡ÈËèÆü¿·Ê¹¡É consists of four Chinese characters, which means ¡Èdaily newspaper¡É.

The domain name [<ËèÆ�E·Ê¹.com> (BQ—3BV44ZPFMWYIAXQ.COM)] was created

on November 9, 2000, according to the search result made by the complainant

shown in the Annex 1 of the Complaint.

5. Parties's Contentions

The Complainant¡Çs contentions are as follows:

(1) The Complainant publishes and circulates ¡ÈËèÆü¿·Ê¹¡É (¡ÈMainichi

Shimbun¡É) daily newspaper and uses its trademark ¡ÈËèÆü¿·Ê¹¡É as a logotype on its newspaper that is well

known among readers as well as its trademark. Thus, the ¡ÈMainichi Shimbun¡É is

appreciated as one of the three major daily newspapers with a national

circulation throughout Japan together with ¡ÈAsahi Shimbun (Ä«Æü¿·Ê¹)¡É and ¡ÈYomiuri Shimbun (ÆÉÇ俷ʹ)¡É. The names of these three newspapers are

also famous among Korean people who are familiar with Japan. In Korea, not only Hangul alphabets as

their 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 of Japanese newspapers plots to prevent Japanese newspaper publishing

companies from registering corresponding domain names that reflect each company¡Çs

trademark.

(2) The Complainant

plans to acquire the multilingual domain name <ËèÆü¿·Ê¹.com> in Kanji characters to reflect its

registered trademark ¡ÈËèÆü¿·Ê¹¡É in

a corresponding domain name. The Complainant unfortunately failed to acquire

the registration of the planned domain name <ËèÆü¿·Ê¹.com>, though it applied for the domain name

on the first day when it became available in Japan. The Complainant¡Çs investigation thereafter revealed that the

identical domain name with what the Complainant planned to acquire had registered

somehow by the Respondent on

November 9, 2000.

Moreover, the Complainant confirmed that the Respondent also registered <Ä«Æü¿·Ê¹.com>, <ÆÉÇ俷ʹ.com> as well as <»º·Ð¿·Ê¹.com>, all of which reflect the trademarks

of ¡ÈÄ«Æü¿·Ê¹ (Asahi Shimbun)¡É and ¡ÈÆÉÇ俷ʹ (Yomiuri Shimbun),¡É the two of the three major

newspaper publishing companies as well as another well-known newspaper

publishing company in Japan ¡È»º·Ð¿·Ê¹

(Sankei Shimbun)¡É on the same date of his/her registration of the disputed

domain name through the same Registrar who handled the registration of the

disputed domain name. The Complainant believes that the Respondent has

intentionally acquired his registrations of the above domain names, including

the disputed domain name, which are correspondent to trademarks of Japanese

major newspaper publishing companies so that the Respondent can prevent these

companies from registering corresponding domain names that reflect each company¡Çs

trademark.

(3) The Complainant

believes that, the disputed domain name that is registered by the Respondent is

identical or confusingly similar to registered trademarks in which the

Complainant has rights. The Respondent should be considered as having no rights

or legitimate interests in respect of the domain name that is subject of the

Complaint, because the Respondent resides in Korea where the Complainant has

never licensed anybody to use the Complainant¡Çs registered trademark.

Furthermore, the disputed domain name should be considered as having been

registered in bad faith in order to prevent the owner of the trademark from

reflecting the mark in a corresponding domain name, because (i) the Respondent

acquired his registration of the disputed domain name from outside of the

country where the Complainant is mainly doing business, before it became

available by a duly and legitimate procedure in the same country, and (ii) the

Respondent acquired three other registrations of domain names that were

correspondent to trademarks of three other business entities of the same

industry of the Complainant simultaneously through the same Registrar with the

registration of the disputed domain name.

The Respondent¡Çs contentions are as

follows:

(1) The

Complainant does not have any legal right for the domain in question. The

Chinese word ¡È每Æü¿·Ê¹¡É is pronounced

maeilshinmun in Korean and it is a combination of very widely used generic

words. Maeil (每Æü) means daily and shinmun means news or

newspapers. Therefore, the Chinese word is translated daily news or daily

newspaper in English. The complainant does not have any of the trademarks of

Daily, DailyNews and DailyNewsPapers in English and also has no claim to the

exclusive right of the Chinese Domain (每Æü¿·Ê¹.com) translated into DailyNews in

English. Almost all of the newspapers in Asia use one of these Chinese characters,

maeil (每Æü), maeilshinmun (每Æü¿·Ê¹) or ilbo (ÆüÊó) which are synonyms in Chinese and means daily news or daily

newspaper. The maeilshinmun (每Æü¿·Ê¹) is most widely used. Therefore, maeilshinmun in Chinese

is a very widely 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 this domain for the sole purpose of restricting the business of

smaller newspaper corporations. On the other hand, there are many maeilshinmun

(Daily newspaper) in Korea and in fact one of them has the trademark in

Korean. Also there are many daily newspapers

all across China, such as a famous China-daily-news who might have the

trademark. Therefor, it is not acceptable that a local Japanese company should

have the only exclusive right for this kind of a generic domain.

(2) The Complainant¡Çs trademark

is only a local one, which legally can be applied in Japan and not outside. In

fact the Complainant only has ¡Èmainichi¡É as a USA federal trademark but it does

not have ¡Èmainichishimbun¡É as a USA federal trademark. It is widely recognized

that USA federal trademark is widely and officially recognized as a world

trademark. And also ¡È.com¡É is commonly used only for worldwide companies or individuals.

(3) The

official name of the complainant is Kabushiki Kaisha Mainichi Shimbunsha. The

domain in question is not identical or even similar to their company name.

Although a company can have many trademarks to protect their business, or to

prevent their competitors from using those names or marks, in this case, the

Complainant couldn¡Çt insist that they have the legal right of all the identical

or similar domains. This case should be considered as an attempt to act in bad

faith or further, a legal attempt at domain hijacking. The complainant only use

the name ¡Èmainichi¡É for international business with its trademark, not mainichishimbunsha

in Chinese, referring to their site www.mainichi.co.jp/english.

(4) The

Complainant¡Çs trademark is not identical to the domain. Different from the

English character, Chinese character has a meaning of itself but an English character

does not have any meaning of itself. As such, each Chinese character can be

used as a word. Therefore each character can be used for various purposes such

as the names of people, businesses, companies, identification and so on. In

order to combat the confusion, a system of seals was created. Within this

system, only one seal, where the characters are carved on wood or other hard

material, could exist. The owner of the seal is able to identify himself from

others by stamping the seal on the document when he needs to identify himself

to someone. In this case, the stamped mark is 100% the same as on the document,

because there are many people using same Chinese 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 identify himself/herself because

there are so many of the same names. Therefore, the complaint should be aware

that they do not have any rational background for their insistence that their

seal type trademark is identical to the generic words ¡Èmaeilshinmun¡É (每Æü¿·Ê¹) in Chinese.

(5) The purpose of a

domain is to be used as a IP address for an Internet web site¡¤but the complainant does not own and use any of mainichi.com/net/org,

any of mainichishimbun.com/net/org, any of mainichishimbunsha.com/net/org, any

of dailynews.com/net/org and any of dailynewspaper.com/net/org as its official

domain website. 每Æü¿·Ê¹ (bq—3bv44zpfmwyiaxq).cc,

tv and ws are available to register now. The Complainant has no reason to make

claim on the disputed domain name. There are many ¡È每Æü¿·Ê¹¡É in Japan such as ¡È¿®Ç»每Æü¿·Ê¹¡É, ¡È宫¸Å每Æü¿·Ê¹¡É, ¡ÈȬ½Å»³每Æü¿·Ê¹¡É, ¡ÈȬ½Å»³每Æü¿·Ê¹¼Ò¡Éand so on. It is impossible that they all infringe the trademark

of the Complainant. This shows that the complainant should not have any

exclusive right for the domain <每Æü¿·Ê¹.com> because it is widely used across the world and

even in Japan by several news paper cooperation. This generic domain at hand will

not bring any loss of business activity to them. The Respondent also should

suppose that the Complainant will not use this domain as their official domain

for their site because it is widely known that most of Japanese companies use

their own countries domain (.co.jp) and also they are able to obtain and use

the multilingual-Japanese domain.co.jp.

With these proofs uncovered and known to all, the complainant

obviously has no right to insist that they have any right for this domain and

their plot to snatch this generic domain from a weaker party should be

dismissed.

(6) The

registration by the Respondent of other Chinese domain names does not show the

Respondent¡Çs bad faith, because there are hundreds of initials and different

meanings in each Chinese character and also each Chinese character has its own

meaning. Therefore, there are many same names used for different purposes in

Chinese culturally influenced areas. The Respondent plans to use his domain

names for promoting the public interest activities. The Respondent has not been

able to use this domain for the planned website because ITEF has not yet

approved the multilingual domains to be an official family member of gTDLs. And

therefore, anyone who has any multilingual domains can not use any multilingual

domains for a website yet.

6 Discussion and Findings

In accordance with the Policy, the Complainant

asking for transfer of the domain name must prove the following three elements:

1) Respondent's domain name is identical or confusingly 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) Respondent has

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 [<ËèÆü¿·Ê¹.com> (BQ—3BV44ZPFMWYIAXQ.COM)]. The Panel finds that the characters

of this domain name ¡ÈËèÆü¿·Ê¹¡É is completely identical

with the registered trademarks held by the Complainant in Japan. The top level

domain designator ".com" is only a necessary portion to form a

business-related domain name and cannot function to distinguish that name from

the Complainant¡Çs trademarks. When deciding whether the disputed domain name is

identical or confusingly similar to a trademark, the key point is to compare

the second level of the disputed domain name with the substantial part of the

trademark. The panel has noticed the Respondent¡Çs contention that the Complainant¡Çs trademark is only a local one, which legally

can be applied in Japan and not outside. The panel does not support this

contention based on the following reasons: firstly, ICANN Policy does

not require any complainants to own ¡Èinternational trademark right¡É or

trademark right of any particular country in order for them to make claims; and

secondly, the disputed domain name <ËèÆü¿·Ê¹.com>

is a multilingual domain name, it can be regarded as a Chinese domain name and

a Japanese domain name as well because Chinese characters in traditional form

are frequently used in Japan. Keeping the above in mind, the Panel believes

that the first element of the ICANN Policy, 4(a) is met.

Respondent¡Çs Rights or Legitimate Interests in the Domain

Name

The Respondent has not provided evidence of

circumstances of the type specified in the ICANN Policy, 4(c). There exists no

evidence that the Respondent, before receipt any notice of the dispute, has

used the domain name or a name corresponding to the domain name in connection

with bona fide; or that the Respondent has been commonly known by the domain

name; or that the Respondent is making a legitimate noncommercial or fair use

of the domain name. Furthermore, the Respondent has not provided evidence of

any other circumstances 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 interest activities. On the other hand, the Complainant

clearly declared that he has never licensed anybody to use his registered

trademarks. As such, the Panel believes that the Respondent has 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 be evidence of the registration and use of a

domain name in bad faith. According to the ICANN 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 the following reasons:

The Complainant has trademark registrations for the

Chinese words ¡ÈËèÆü¿·Ê¹¡É in Japan and has begun to

use the trademarks in Japan before the creation of the disputed domain name. ¡ÈËèÆü¿·Ê¹¡É (Mainichi Shimbun), together with ¡ÈÄ«Æü¿·Ê¹¡É (Asahi Shimbun) and ¡ÈÆÉÇ俷ʹ¡É (Yomiuri Shimbun), are appreciated as the

three major daily newspapers with a national circulation throughout Japan. These

three newspapers, to some extent, are also famous in many foreign countries,

especially in the Japan¡Çs neighboring countries or regions. Besides the domain

name at issue, the Respondent also registered simultaneously <Ä«Æü¿·Ê¹.com>, <ÆÉÇ俷ʹ.com> as well as <»º·Ð¿·Ê¹.com>, all of which are the three famous

newspaper publishing companies in Japan. The Panel infers from the Respondent¡Çs

behavior that, when making the registration applications, the Respondent

clearly knew that ¡ÈËèÆü¿·Ê¹¡É was one of the major

Japanese newspapers. The Chinese character of the disputed domain name is

identical to the trademarks ¡ÈËèÆü¿·Ê¹¡É owned by the Complainant. By

common knowledge, using the Chinese wording ¡ÈËèÆü¿·Ê¹¡É as the second level of a domain name can be a very direct, exact and

preferred way to reflect the Complainant¡Çs identity, functions and services

offered by the Complainant. In absence of proof that the Respondent possesses

the rights or other legitimate interests in the domain name in dispute, the Panel

believes that the Respondent¡Çs conduct of acquiring and holding the domain name

[<ËèÆü¿·Ê¹.com> (BQ—3BV44ZPFMWYIAXQ.COM)] has

prevented the Complainant from reflecting its trademark in a corresponding Chinese

domain name. In addition, the situation that names for four famous Japanese newspapers

were registered as multilingual domain names by the same Respondent is regarded

by the Panel as a fact of bad faith.

For the reasons above, the Panel finds that the

Respondent¡Çs registration and use of the domain name at issue is in bad faith.

7. Decision

The Panel concludes (a) that the domain name [<ËèÆü¿·Ê¹.com> (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) that the Respondent has registered and used

the domain name in bad faith. Therefore, the Panel orders that the domain name

[<ËèÆü¿·Ê¹.com> (BQ—3BV44ZPFMWYIAXQ.COM)] be

transferred to the Complainant.

Li Yong

Sole Panelist

Dated: June 5, 2001