WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BUNGEI SHUNJU LTD. v. BUNGEISHUNJU. COM and BUNSHUN. COM
Case No. D2000-0434
1. The Parties
The Complainant is BUNGEI SHUNJU LTD. , a company incorporated in Japan, with its head office at Kioi-cho 3-23, Chiyoda-ku, Tokyo 102-8008, Japan.
The Respondents are BUNGEISHUNJU. COM and BUNSHUN. COM, respectively for "bungeishunju. com" and "bunshun. com", the Domain Names at issue. According to the Network Solutions" WHOIS database, both Registrants' names are accompanied by the following information: Administrative Contact, Technical Contact, Zone Contact: Administrator, Domain (DA5853) dealer@MA4. JUSTNET. NE. JP Interdealer, PO Box 28, Soka, 340-8691, JP. + 81 9045373220.
2. The Domain Name and Registrar
The Domain Names at issue are bungeishunju.com and bunshun.com. Both Domain Names are registered with Network Solutions, Inc. ("NSI"), 505 Huntmar Park Drive, Hemdon, Virginia 20170, U. S. A.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2000, by e-mail and in hardcopy. The Acknowledgement of Receipt of the Complaint was sent by the Center to the Complainant on May 21, 2000. On May 21, 2000, the Center sent a Request for Registrar Verification to NSI. On May 24, 2000, the Center received from the Registrar a Verification Response confirming that the Registrar is the registrar of the said domain name, that the Respondent is the current registrant of the said domain name, and that the said domain name is in "active" status.
The Center, having confirmed that the formal requirements are complied, sent a Notification of the Complaint and Commencement of Administrative Proceedings to the Respondent on May 29, 2000.
Interdealer filed a Response for the Respondents on June 17, 2000, and the Center sent its Acknowledgement of Receipt of the Response on June 19, 2000.
The Center sent a Notification of the Appointment of Administrative Panel and Projected Decision Date on June 26, 2000.
4. Factual Background
The facts stated in the complaint, and not disputed by Interdealer in its Response, are summarized as follows:
The Complainant, being one of the largest publishing companies in Japan, publishes wide range of popular magazines including "Monthly Bungei Shunju" since 1923 and "Weekly Bunshun" since 1959, and more than 400 book titles per year. The Complainant is the sponsor of prestigious literary awards such as the Akutagawa Prize, the Naoki Prize and the Ohya Nonfiction Prize. (See Annex G)
The Complainant is the owner of more than one hundreds registered trademarks consisting of the word "Bungeishunju" in kanji characters and "Bunshun" in katakana or kanji characters, for goods in various classes. The Complainant secured a number of defensive mark registrations for its registered trademarks "Bungeishunju" and "Bunshun", both in kanji characters. (See Annex H) Both "Bungeishunju" and "Bunshun" in kanji characters are included in the list of famous trademarks in AIPPI JAPAN, FAMOUS TRADEMARKS IN JAPAN (1998). (See Annex I)
The Complainant is the registrant of the domain name "bunshun. co. jp" and currently operates its principal web site at "bunshun. topica. ne. jp. " Prior to the filing of the Complaint, the Complainant made substantial efforts to identify and contact the Respondents. The postal address of both Respondents, as contained in the Registrar's WHOIS database, is the post office box number in the city of Soka of Japan, PO 28, Soka, 340-8691, JP. The database also contains the same domain administrator, Interdealer, which has the same postal address (PO 28, Soka, 340-8691, JP), e-mail address (dealer@ma4. justnet. ne. jp) and mobile telephone number (+81 9045373220), for the two contested domain names. The Complainant tried to contact the Respondents using the above postal and e-mail addresses, but received no response.
The Complainant called the above telephone number several times, but was never answered. However, the Complainant obtained the name of the registrant, as well as his address, for the above telephone number from the local telephone company. The person is an individual by the name of Shimomae Makoto who resides in the city of Soka. It was also discovered that at least 19 other domain names have been registered under the name of Interdealer and the registered domain names include "shimomae. com. " (See Annex B). Thus, the Complainant believes that Mr. Shimomae is the person behind the Respondents. Despite the Complainant's efforts to contact Mr. Shimomae, by mail and telephone call, Mr. Shimomae flatly refused to talk to the Complainant's attorneys without giving any reasonable reason. (See Annex M).
5. Parties Contentions
The Complainant requests the Administrative Panel the issuance of a decision to effect the transfer of the Domain Names to the Complainant on the following grounds:
1. Each of the following three elements specified in para. 4(a) of the Uniform Policy are applicable to this dispute:
(1)The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2)The Respondents have no rights or legitimate interests in respect of the domain names; and
(3)The domain names were registered and are being used in bad faith.
2. As to element (1) above, the relevant part of the Domain Names in issue are "bungeishunju" and "bunshun," and they are clearly identical or confusingly similar to the Complainant's registered trademarks. (See Annex H)
3. As to element (2) above, the words "bungeishunju" and "bunshun" are invented words, and are not those that traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complainant has not licensed or otherwise permitted the Respondents to use any of its trademarks, nor has it licensed or otherwise permitted the Respondents to apply for or use any domain name incorporating any of those marks. Accordingly, the Respondents have no rights or legitimate interests in respect of the domain names in issue.
4. As to element (3) above, evidence of bad faith registration and use is established by the following circumstances:
(i)The Respondents also registered at least 20 other domain names under the name of Interdealer, or with the domain administrator's name being Interdealer, most of which are identical or confusingly similar to the names of major publishers, railway companies, banks and other famous corporations in Japan. (See Annex B and C)
(ii)None of these 22 domain names resolves to any meaningful web site or other online presence. (See Annex N)
(iii)The Registrant intentionally concealed its actual name by applying the domain name "bunshun. com" under the name "bunshun. com" and the domain name "bungeishunju. com" under the name "bungeishunju. com" and using the same post office box number for both registrations. Also, the Respondents have provided a non-existing postal code ("340-8691") for the purpose of their domain name registration, in breach of the Respondents' warranty under para. 2(a) of the Uniform Policy.
(iv)The trademarks "bungeishunju" and "bunshun" are among the best known trademarks in Japan, and it is inconceivable that the person or persons behind the Respondents would not be aware of this fact.
(v)By virtue of the wide spread use and reputation of the trademarks "bungeishunju" and "bunshun", members of the public in Japan would believe that the entity owning the domain names "bungeishunju. com" and "bushun. com" is the Complainant or in some way associated with the Complainant.
(vi)Any realistic use of the domain names must misrepresent an association with the Complainant and its goodwill, resulting in breaches of Japanese Anti-unfair Competition Act (Fusei Kyoso Boshi Ho).
The Response filed by Interdealer for BUNGEISHUNJU. COM and BUNSHUN. COM is not fully understandable because of its drafting style and use of ambiguous expressions, but its contentions can be summarized as follows:
1. The domain name "bungeishunju. com" is unnecessary for Interdealer and, therefore, Interdealer requests NSI its deletion and, if it is not deleted as requested by Interdealer, Interdealer plans to leave it until the end of the registration period.
2. The name "bunshun" or names similar to it are used by various companies in Japan, such as "Video Bunshun", "Bunshun-do Book Store", and "Bunshun-do" as shown in Annex A.
3. The Complainant's trademark registrations of "Bungeishunju" and "Bunshun" do not have extraterritorial effects and these trademarks are not registered at the United States Patent and Trademark Office, and, hence, the commencement of this administrative proceeding may cause international problems.
4. Under Japanese trademark law, a trademark right is established by registration and actual use is to the requirement for registration. Adoption of "bungeishunju. com" and "bunshun. com" does not violate the trademark law and Anti-unfair Competition Act of Japan.
5. There is a possibility that this complaint has been filed by Bungeishunju in bad faith. In the past, Bungeishunju was suspended by the court to publish Yukio Mishima's letter. If Bungeishunju publishes this response in their magazine, this will be the proof of its bad faith.
6. If Bungeishunju publishes this response, Interdealer will take legal measures for infringement of copyright, trade secret and privacy.
6. Discussion and Findings
Paragraph 4 (a) of the Policy requires the Complainant to prove that each of the following elements are present:
(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;
(2)that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3)that the domain name has been registered and is being used in bad faith.
The Response filed by Interdealer for the Respondents, BUNGEISHUNJU. COM and BUNSHUN. COM, does not rebut the Complainant's assertion and proof that the Complainant owns registered trademarks "Bungeishunju" and "Bunshun" for various classes of goods and that both trademarks are well-known or famous in Japan as indicating the Complainant's publications and its activities. Accordingly, the Panel finds that:
(1)The dominant part of the Domain Name "bungeishunju" and "bunshun" are identical to the Complainant's registered trademarks;
(2)The Respondent has no rights or legitimate interests in respect of the Domain Names;
(3)The Domain Names have been registered in bad faith. The Response indicates, in paragraph 2, that the word "bunshun" is used by some video rental shops and book and stationery stores. This fact cannot be an excuse for one's adoption of this word in his domain name where the Claimant's trademark "bunshun" is so well known as indicating the source of its weekly magazine.
Since the Complainant's business activities under its trademarks are centered in Japan, the guiding principles for resolving the dispute in this case can be found in the Japanese law which extends broader protection to well-known and famous trademarks under the Trademark Act (Law No. 127, 1959) and the Unfair Competition Prevention Act (Law No. 47, 1993).
Although the adoption for one's domain name of a well-known or famous trademark of another person does not, in technical sense, constitute an infringement of that trademark, such domain name weakens the association of that trademark with its owner and his business. When one adopts a mark identical or similar to a well-known trademark of another for one's goods or service, he is not entitled to trademark registration under Article 4(1)(x) or (xv) of the Trademark Act. Unauthorized use for one's goods or business of a well-known or famous trademark of another can be enjoined under Article 2(1)(i) or (ii) of the Unfair Competition Prevention Act.
The purpose of these provisions is to protect the owner's goodwill associated with his well-known or famous trademark, and prevent the distinctive quality of such trademark from being diluted. These statutes are also designed to protect the interest of the consuming public. For these reasons, protection of a well-known or famous trademark should extend to prohibit its unauthorized appropriation for one's domain name, as in the case of the Respondents Domain Names at issue.
Based on the above findings, the Panel hereby decides that the registration of the Domain Names at issue, bungeishunju. com and bunshun. com, shall be transferred to the Complainant, BUNGEI SHUNJU LTD.
Dated: July 10, 2000