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WIPO Domain Name Decision: D2000-1791
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 <ЋO‹¤.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
registrarЃfs 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 <ЋO‹¤.com> (Ѓgbq—3bhasulr.comЃh 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
ЃgCommencement NotificationЃh) 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 OnlineNicЃfs
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 ComplainantЃfs 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 JONGЃfs 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 "ЋO‹¤." 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 "ЋO‹¤ (SANKYO)" registered and being in actual use
in the ComplainantЃfs 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 ComplainantЃfs trademarks registrations in
relevant countries. Suffice to say the trademark "ЋO‹¤
(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 <ЋO‹¤.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 (ЋO‹¤.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 ЋO‹¤
in Chinese) for "Sankyo Art Salon" for which the Respondent is arguing
to have initially registered ЋO‹¤.com.
5. PartiesЃfContentions
A. The Complainant
Identicality or confusing
similarity as between the domain name and trade marks
The Complainant contends that the domain name <ЋO‹¤.com> is exactly identical with the Complainant,
Sankyo Co., Ltd.Ѓfs trademark ЃgЋO‹¤Ѓh which is
registered and used extensively in Japan, China, and the U.S.A..
RespondentЃfs 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 <ЋO‹¤.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 ЋO‹¤ and, also, that any
commercial use of ЋO‹¤ (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 <ЋO‹¤.com>. For example, the Respondent has
registered other multilingual domain names like <‰––м‹`.com>
and <“c•У.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.
(‰––м‹`ђ»–тЉ”Ћ®‰пЋРShionogi
Seiyaku Kabushiki Kaisha) and Tanabe Seiyaku Co., Ltd. (“c•Уђ»–тЉ”Ћ®‰пЋРTanabe Seiyaku Kabushiki Kaisha).
Bad faith on the part of
the Respondent
According to the Complaint, the Complainant's
trademark ЃgЋO‹¤Ѓh
is so famous in Japan, China and the U.S.A. that the Respondent was undoubtedly
aware of the ComplainantЃfs 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 <ЋO‹¤.com>
in bad faith is evidenced by the Respondent's knowledge of the Complainant's
rights in the mark ЋO‹¤
(SANKYO) and its preventing the Complainant from using domain name that
incorporates its famous mark ЋO‹¤ (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 ЋO‹¤ (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 <ЋO‹¤.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
ЋO‹¤ (SANKYO). The
Respondent's awareness of the prominence and fame of the Complainant's mark ЋO‹¤ (SANKYO) and the
confusion among the public to be caused, further infers that the Respondent
registered the domain name ЋO‹¤ (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 ЋO‹¤.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 ЋO‹¤ comprises two Japanese kanji, ЋO (meaning
"three") and ‹¤(meaning
"together") and, thus, that the term ЋO‹¤ is descriptive in
Japanese. ЋO‹¤
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 ЋO‹¤
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 ЋO‹¤ 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 <‰––м‹`.com> and <“c•У.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 <‰––м‹`.com>) and <tanabe.com>
(corresponding to <“c•У.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 <ЋO‹¤.com>, the Panel finds that the domain name at issue is
identical to the Complainant's trademark and trade name ЃgЋO‹¤Ѓh. 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 <ЋO‹¤.com> is identical
to or confusingly similar with the Complainant's trademark.
RespondentЃfs rights or
legitimate interests in the domain name
It is not contested that the Complainant has not authorized the
Respondent to use the trademark "ЋO‹¤".
Neither does the Respondent have the rights to the trademark "ЋO‹¤" 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 "ЋO‹¤".
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 "ЋO‹¤" comprising two Japanese kanji, ЋO(meaning "three") and ‹¤(meaning "together") and argues that the
Respondent has the equal rights to use the term "ЋO‹¤"
as the domain name.
Although the Complainant's trademark "ЋO‹¤" 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 "ЋO‹¤" appear in ‘еЋ«—СЃidaijirinЃjdictionary/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
"ЋO‹¤" 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 "ЋO‹¤" merely by registering it as
the domain name. See BarneyЃfs 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 "ЋO‹¤" 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 "ЋO‹¤" 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 <‰––м‹`.com> and <“c•У.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 <ЋO‹¤.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 <ЋO‹¤.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 <‰––м‹`.com> and <“c•У.com>
in addition to <ЋO‹¤.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 RespondentЃfs registration of multiple domain names like <“c•У.com> and <‰––м‹`.com> should not affect
the Panel in the current case on <ЋO‹¤.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 <ЋO‹¤.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 <ЋO‹¤.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 <ЋO‹¤.com>
to the Complainant, Sankyo Co., Ltd.
Sang Jo JONG
Sole Panelist
Dated: March 23, 2001