Sankei Shimbun Co. Ltd. v. Jg Kim

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha

Sangyokeizai Shimbunsha v. Jg Kim

Case No. D2001-0620

See Also PDF File: D2001-0620

1. The Parties

The Complainant is Kabushiki Kaisha Sangyokeizai Shimbunsha (its English name:

Sankei Shimbun Co., Ltd.), a company incorporated under the laws of Japan, with

its principal place 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 at Yangduck2dong Hyundai Apt 401 Masan, Kyungnam 645-492, Korea.

2. The Domain Name and Registrar

The domain name in dispute

is [<ߧ経ãæÚ¤.com>

(bq--3b2sg7kmmwyiaxq.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 May 1 and 3, 2001, by email and in hard copy respectively, and received the

Amendment to the Complaint by email and in hard copy on May 1 and June 11, 2001.

On May 2, 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 May 3 and 31, 2001. On June 1, 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 active.

On May 24, 2001, the Center received the report on

non-delivery of the Compliant from Complainant.

On May 29 and 30, 2001, the Center received the

communications from the Respondent and made the replies accordingly. And the

Center received the communication from the Complainant and the Respondent

respectively on May 31 and June 1, 2001, and made its corresponding 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 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 June 13, 2001.

On June 20 and 21, 2001, The Center received the

communications from the Respondent and 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 the Response.

On July 3, 6

and 9, there are some communications between the Center and the Respondent.

On July 11, 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 and the

projected decision date.

4. Factual

Background

The Complainant is a Japanese newspaper publishing

company established in 1942, with its principal office in Tokyo, the main

offices in Osaka and some foreign correspondents in some cities throughout the

world.

The Complainant owns trademark rights over the

logotype ¡°ß§経ãæÚ¤¡± in Japan. The

current version of the Complainant¡¯s logotype ¡°ß§経ãæÚ¤¡± that appeared on the Complainant¡¯s newspapers were

registered with Japanese Patent Office as Complainant¡¯s trademark on February 8, 1957, and

on July 30,

1990, of

which trademark registration expire 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 under Japanese Trademark Law 1959, which included ¡° newspaper¡±.

The registered trademark of ¡°ß§経ãæÚ¤ consists of four Chinese

characters.

The domain name [<ߧ経ãæÚ¤.com>

(bq--3b2sg7kmmwyiaxq.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¡¯

Contentions

The Complainant¡¯s contentions are as follows:

(1) The Complainant publishes and circulates¡°ß§経ãæÚ¤¡±(¡°Sankei Shimbun¡±) daily newspaper

everyday for about two million readers in Japan and uses its trademark ¡°ß§経ãæÚ¤¡± as a logotype on its

newspaper which is well known

among readers as well as its trademark. The ¡°ß§経ãæÚ¤¡± is appreciated as one of major daily newspapers with a national

circulation throughout Japan together with ¡°Asahi Shimbun (ðÈìíãæÚ¤),¡± ¡°Yomiuri Shimbun (読売ãæÚ¤),¡± and ¡°Mainichi Shimbun (毎ìíãæÚ¤).¡± The names of Japanese major newspapers,

especially Complainant¡¯s newspaper, are also famous in Korea, not only among

the intelligentsia but also among ordinary office workers, students and

housewives through Korean mass media¡¯s news reports with regard to news reports

in ¡°Sankei Shimbun¡±. Moreover, the Complainant associates with a

Korean newspaper publishing company the Kyung Hyang Shinmun to provide news in relation to Japan. In Korea, both Hangul alphabets and Chinese

characters are used among Korean people. Some educated or aged Koreans can even read Japanese documents that include Chinese characters as well as Hiragana and Katakana

letters of Japanese origin. 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¡¯s trademark.

(2) The Complainant plans to acquire the

multilingual domain name <ߧ経ãæÚ¤.com> in Chinese characters to reflect its registered trademark ¡°ß§経ãæÚ¤¡± in a corresponding domain name. The

Complainant unfortunately failed to acquire the registration of the planned

domain name <ߧ経ãæÚ¤.com> though it applied for

the domain name on the first day when it became available in Japan. The

Complainant¡¯s investigation thereafter revealed that the identical domain name

with what the Complainant planned to acquire had been registered somehow by a person named Pilyun Kim

who resides in Korea on November 9, 2000, before the domain name became

available by a duly and legitimate procedure in Japan. Pilyun Kim also registered <ðÈìíãæÚ¤.com>, <読売ãæÚ¤.com> and <毎ìíãæÚ¤.com>, all of which reflect the trademarks of ¡°ðÈìíãæÚ¤ (Asahi Shimbun)¡±, ¡°読売ãæÚ¤ (Yomiuri Shimbun)¡± and ¡°毎ìíãæÚ¤ (Mainichi Shimbun)¡± that

are three major newspaper publishing companies in Japan on the same date of

his/her registration of the disputed domain name through the same

Registrar.

It is quite clear that Pilyun Kim intentionally acquired his/her registrations of

the disputed domain name and some other domain names that are correspondent to

well-known trademarks of Japanese major newspaper publishing companies in order

to warehouse those domain names without any specific rights or interests in

them. This indicates Pilyun Kim¡¯s

pattern of conduct aimed at preventing trademark owners, including the

Complainant, from registering corresponding domain names that reflect each

company¡¯s trademark.

(3) The Respondent in this case is not Pilyun Kim

who originally acquired the registration of the disputed domain name. However, the disputed domain name that is currently registered by the Respondent is

exactly identical to the registered

trademark 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¡¯s registered trademark. Moreover, the disputed domain name has never been used

for five months since it was registered by Pilyun Kim, which shows that neither

Pilyun Kim nor the Respondent has need to use and register the disputed domain

name.

The Respondent succeeded to the registrant of the disputed domain name from

Pilyun Kim by March 7, 2001, after Pilyun Kim¡¯s receipt of the copy of a Complaint

that was filed with WIPO¡¯s arbitration and mediation center by Kabushiki Kaisha

Mainichi Shimbunsha (English name: The Mainichi Newspapers, hereinafter ¡°Mainichi¡±)

that claimed for transferring <毎ìíãæÚ¤.com> that reflects its registered

trademarks from Pilyun Kim. In the Complaint for the pending case between Mainichi

and Pilyun Kim (case number: D2001-0307), Mainichi

argues that, the simultaneous registration of four domain names that all reflect

the trademarks of Japanese major companies in the same industry (newspaper publishing)

by Pilyun Kim clearly shows Pilyun Kim¡¯s intention with bad faith to prevent

the legitimate trademark holders from registering domain names that reflect

their respective trademarks. Therefore, the Complainant believes that

by March 7, 2001 when the Respondent succeeded to the registrant of the disputed

domain name herein from Pilyun Kim, the Respondent and Pilyun Kim had recognized

that the registration of <毎ìíãæÚ¤.com> could be transferred to Mainichi

by an Administrative Panel¡¯s decision; and the disputed domain name could be

also transferred to the holder of the registered trademark corresponding to

<ߧ経ãæÚ¤.com> when the trademark holder would file a Complaint with

a dispute-resolution service provider approved by ICANN. Consequently, it is

quite likely that the Respondent is another cyber squatter who conspires with

Pilyun Kim, or a nominal party who substantially helps a true cyber squatter

behind to camouflage the Respondent has a legitimate interests in respect of

the disputed domain name. It also supports the above that Pilyun Kim had

never 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 Complaint

for the case with regard to <毎ìíãæÚ¤.com> from Mainichi, s/he also

transferred two other registered domain names (<ðÈìíãæÚ¤.com> and <読売ãæÚ¤.com>)

to two different persons.

It can be inferred from the

Respondent¡¯s succession of the disputed domain name from a registrant who apparently

acquired the registration with bad faith that the Respondent has no rights or legitimate interests in respect of the

disputed domain name which has been registered by the Respondent in bad faith.

The Respondent¡¯s contentions are as

follows:

(1) The disputed domain name <ߧ経ãæÚ¤.com> consists of four Chinese

characters, among which, ¡°ãæÚ¤¡± means

news/newspapers and ¡°ß§経¡± means the industry and economy. Every news / news paper company in Chinese

affected countries uses ¡°ãæÚ¤¡± after their company names. ¡°ß§経¡± is also the widely used initialized generic word which anyone cannot

claims to have an exclusive right of it.

(2) The complainant said he uses its trademark ¡°ß§経ãæÚ¤¡± as a logotype on its newspaper which is well known among readers as well as its trademark. The

Respondent has never

seen the Complainant¡¯s trade

mark and can not accept

that the graphical type of their trade mark is not only identical and but also similar

to the domain name <ߧ経ãæÚ¤.com>.

The complainant said ¡°ß§経ãæÚ¤¡±(Sankei Shimbun)

is appreciated as one of major daily newspapers with a national circulation throughout

Japan together. The Respondent

never read the Complainant¡¯s newspapers

and does not know that it is a major one or

not. The Respondent has

never heard that the

complainant is famous in Korean and even never

seen the complainant¡¯s newspapers in Korea, and

also never met any guy to read the paper

not only in Korea but also outside of Japan. In

the site of The

Kyung Hyang Shinmun, there is no notice that The Kyung Hyang Shinmun has

any relationship with the Japanese complainants.

(3) The Respondent has ordered and made the payment to Pilyun Kim who

told the Respondent that he had an account for pre-registration for

multilingual domain names at Alldomains.com.

Since the Respondent¡¯s ordered

domain <ߧ経ãæÚ¤.com> was

successfully registered, the Respondent

have asked many times to

transfer this domain to a Korean registrar, but

Pilyun Kim

explained to the Respondent that the domains

transfer between registrars have not been approved by Verisign, and he could not transfer this domain to the Respondent. That is the reason why the disputed

domain name is still on the Alldomains.com¡¯s

serve. Though the Respondent does not

like to think that in the

case he will

be defeated, but, if it

happens, the Respondent have made the notice to Pilyun Kim

that he will make a big claim to him.

(4) The disputed domain name is surely not identical to the Complainant¡¯s registered trademark and even not similar to its roughly

graphicrized or painted mark. The complainant¡¯s

company is a Japanese local company and the right they insisted should be

limited in Japan. The complainant cannot insist their claims in

Korea because they do not have any legal right in Korea. The Chinese wording of the disputed domain name <ߧ経ãæÚ¤> is very widely used generic initials in Korea, Chinese,

Japanese and Chinese culturally affected countries, no one cannot insist that the Respondent should not have the right over the wording. Up to now, no

one can use the multilingual domain name as an official Internet address. Only

for some testing purposes, they can be used a forwarded one.

(5) Based on the domain name <ߧ経ãæÚ¤.com> was not registered or acquired

primarily for the purpose of selling, renting, or otherwise transferring the

domain name registration to the Complainant, as the alleged owner of the

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

consideration in excess of the Respondent¡¯s out-of-pocket costs directly

related to the domain name, the Respondent has never tried to sell this domain not only

to the complainant but also anybody in the world because the Respondent planed and plans for the use of his business purpose. The domain name was not registered in order to prevent

Complainant from reflecting his mark in a corresponding domain name and, in

connection 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 attract for commercial gain. The Respondent has never done any harmful activities to make the complainant

to lose any profits. And also the complainant could not show what they lost

from the

Respondent¡¯s having

this domain. The Respondent

is making a legitimate non-commercial or fair use of the domain name, without

intent for commercial gain misleadingly to divert consumers or to tarnish the

trademark(s) or service mark(s) at issue. This domain name will be used written in Korean and Chinese Language, and the complainant¡¯s customers using Japanese windows will not be

confused.

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 [<ߧ経ãæÚ¤.com>

(bq--3b2sg7kmmwyiaxq.com)]. The Panel finds that the characters of this domain

name ¡°ß§経ãæÚ¤¡± are confusingly similar to

the registered trademark held by the Complainant in Japan. It is true that the

characters of the disputed domain name are slightly different in shape with the

characters of the trademark of 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 of view, the two words have just

same meaning and same pronunciation. In fact, they are interchangeable. In

addition, the panel does not agree with the Respondent¡¯s contention that ¡°ß§経¡± is widely used

initialized generic word which anyone cannot claims to have an exclusive right

of it. The word ¡°ß§経ãæÚ¤¡±is a coined word

rather than a generic one. Therefore the Complainant have exclusive right on

it. The panel

has noticed the Respondent¡¯s contention that the complainant¡¯s

company is a Japanese local company and the right they insisted should be

limited in Japan. The complainant cannot insist their claims in

Korea because they do not have any legal right in Korea. The

panel does not support this contention because ICANN Policy does not

require any complainants to own ¡°international trademark right¡± or trademark

right of any particular country in order for them to make claims based on the

Policy. Keeping the above in mind, the Panel believes that 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 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. On the other hand, the

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

registered trademarks in Korea. 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 registration for the

Chinese words ¡°ß§経ãæÚ¤¡± in Japan and has begun to use the trademark

in Japan before the creation of the disputed domain name. ¡°ß§経ãæÚ¤¡± (Sankei

Shimbun), together with ¡°毎ìíãæÚ¤¡± (Mainichi

Shimbun), ¡°ðÈìíãæÚ¤¡± (Asahi

Shimbun) and ¡°読売ãæÚ¤¡± (Yomiuri

Shimbun), are appreciated as the four major daily newspapers with a national

circulation throughout Japan. These newspapers, to some extent, are also famous

in many foreign countries, especially in the Japan¡¯s neighboring countries or

regions. Besides the domain name at issue, the former registrant of the disputed domain name Pilyun Kim

also registered simultaneously <ðÈìíãæÚ¤.com>,

<読売ãæÚ¤.com>

as well as <毎ìíãæÚ¤.com>,

all of which are the three famous newspaper publishing companies in Japan. The

Panel infers from Pilyun

Kim¡¯s behavior that, when making the registration

applications, he

clearly knew that ¡°ß§経ãæÚ¤¡± was

one of the major Japanese newspapers and further believes that Pilyun Kim

registered and used the disputed domain name in bad faith.

The Respondent claimed that he obtained the disputed

domain name from Pilyun Kim by transfer. However, it is a common sense that, just

like the transfer of other kinds of intellectual properties, when getting the

domain name by transfer from others, the transferee 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 probably infringe upon

the legitimate rights of others. The Respondent should have known this and take

the corresponding responsibility arising from the transfer. Moreover, the

Respondent could not furnish evidence to prove that he acquired and held the

disputed domain name by good reasons. Considering the influence of the

newspaper ¡°ß§経ãæÚ¤¡± in

Japan and its neighboring countries, it is inferred that the Respondent knew

the name of the newspaper company. The Chinese characters of the disputed

domain name are confusingly similar to the trademarks ¡°ß§経ãæÚ¤¡± owned by the Complainant. By

common knowledge, using the Chinese wording ¡°ß§経ãæÚ¤¡± 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 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¡¯s

conduct of acquiring and holding the domain name [<ߧ経ãæÚ¤.com>

(<bq--3b2sg7kmmwyiaxq.com>)] has prevented the Complainant from reflecting

its trademark in a corresponding Chinese domain name.

For the reasons above, the Panel

finds that the registration and use of the domain name at issue is in bad

faith.

7. Decision

The Panel concludes (a) that

the domain name [<ߧ経ãæÚ¤.com>

(<bq--3b2sg7kmmwyiaxq.com>)] 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) that the domain name at issue has registered and

used in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15

of the Rules, the Panel orders that the domain name [<ߧ経ãæÚ¤.com>

(<bq--3b2sg7kmmwyiaxq.com>)] be transferred to the Complainant.

Li Yong

Sole Panelist

Dated: July 25, 2001