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Generic Top Level Domain Name (gTLD) Decisions |
Johrei Fellowship Corporation California
v. Bigdoggie.com
Claim Number: FA0303000147309
PARTIES
Complainant
is Johrei Fellowship Corporation
California, Torrance, CA, USA (“Complainant”), represented by Michael A.
Cornman of Schweitzer Cornman Gross & Bondell. Respondent is Bigdoggie.com, Kwangju, II, KOREA (“Respondent”), also known as
Enamecorp.com and Taeho Kim.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <johrei.com>,
registered with OnlineNIC, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 28, 2003; the Forum received
a hard copy of the
Complaint on March 3, 2003.
On
March 3, 2003, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain
name <johrei.com> is
registered with OnlineNIC, Inc. and that Respondent is the current registrant
of the name. OnlineNIC, Inc. has
verified that Respondent is bound by the OnlineNIC, Inc. registration agreement
and has thereby agreed to resolve
domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
March 10, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of March 31, 2003
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail,
post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@johrei.com by e-mail.
A
timely Response was received and determined to be complete on March 31, 2003.
On April 7, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed David E. Sorkin as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
alleges as follows: It is the owner of
the mark JOHREI, which appears on the Principal Register of the U.S. Patent
& Trademark Office, registration
number 1,873,841. The mark designates a “spiritual practice”
known internationally, including the United States, Japan, and Korea, and has
been used
continuously since 1953.
Complainant was the registrant of the disputed domain name <johrei.com> from October 1995 until
inadvertently permitting the registration to lapse in October 2000.
The
domain name was subsequently registered by Respondent, and in August 2001
Complainant contacted Respondent’s administrative contact,
Taeho Kim, in an
effort to obtain the domain name. Taeho
Kim responded as follows:
We
purchased the domain johrei.com for our developing web site. Additionally, we purchased it legally.
And
we’ve prepared the project for 2 years about the domain johrei.com related
local governments’s web page. As you
may know that, “johrei” means that local government’s law.
And
“make an offer” you saw is for enic.net,[1]
simply for domain registration service.
After
we recieved your email, we hold meeting for this case, Even though we prepared
to build web site for two years, We are willing
to negotiate with you about
ownership change, if you wanna buy the domain eagerly. But, we need your considerations about our
firm’s expenses we spent for spending contents. The expenses range is about $11,000.00, exactly W15,000,000 won in korea won. Let me know if you agree on or not.
Complainant
notes that it possessed the registration for the disputed domain name during
most of the “two years” referred to in Respondent’s
message quoted above. Complainant also states that it was unable
to find any Korean-language references to the term “johrei.”
Complainant
alleges that Respondent should be considered as having no rights or legitimate
interests in the disputed domain name because
Respondent lacks trademark rights
in the corresponding mark, has not been commonly known by the domain name, has
not used it in connection
with any bona fide offering of goods or services, and
is using it to divert users to adult-oriented web sites unaffiliated with
Complainant.
Complainant
further alleges that the Panel should infer bad faith registration and use
based upon the international notoriety of Complainant’s
mark (including in
Respondent’s country) and upon Respondent’s actions, including, inter alia, its offer to sell the
disputed domain name to Respondent for $11,000 and its repeated acts of
registering other domain names identical
to registered trademarks and linking
them to sexually explicit web sites.[2]
B.
Respondent
Respondent
contends that it has a legitimate interest in the disputed domain name, because
it is a generic term in Korea, China, and
Japan for an ordinance or local
law. Respondent claims (as noted in the
message quoted above) to have spent two years preparing to use the name <johrei.com> for a local government
web page, and apparently contends that these preparations give rise to a
legitimate interest. In the
alternative, Respondent claims that it has a legitimate interest in selling the
domain name because it is generic and was registered
in good faith.
With
regard to bad faith, Respondent denies that Complainant’s mark is known
internationally, claiming that it had never even heard
of Complainant when it
registered the disputed domain name.
FINDINGS
1.
The disputed domain name <johrei.com>
is identical to JOHREI, a mark in which Complainant has rights.
2.
Neither Respondent’s purported preparations to use the disputed domain
name nor its interest in selling the name support a claim of
rights or legitimate
interests in respect of the domain name.
3.
Respondent registered and is using the disputed domain name in bad
faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
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)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
The disputed domain name <johrei.com> consists of the mark
JOHREI appended to the generic “.com” top-level domain, and therefore is deemed
identical to the mark for
purposes of the Policy. There does not appear to be any dispute on this point.
Respondent claims that as of August 30,
2001, it had spent two years preparing to use the domain name <johrei.com> for a local government
web page. Yet the domain name had been
continuously registered by Complainant for several years prior to the lapse of
its registration in October
2000. Under
these circumstances, and in light of the fact that Respondent has offered no
evidence of its claimed preparations, the Panel
rejects Respondent’s claim as
not credible.
Respondent’s other basis for claiming a
legitimate interest in the domain name rests upon its assertion that the domain
name was registered
in good faith.
Because the Panel finds otherwise as to the latter point, see infra, the Panel declines to find
for Respondent on this basis either.
Respondent’s claim that it had never
heard of Complainant (or its mark) when it registered the disputed domain name,
if accepted by
the Panel, would preclude a finding of bad faith registration,
and Respondent would prevail in this proceeding. However, under the circumstances of this case, the Panel does not
find that claim to be credible. To the
contrary, Respondent’s conduct in this matter is entirely consistent with an
inference that, as it apparently has done on numerous
other occasions, it chose
to register the domain name soon after its registration lapsed because of its
similarity to a known trademark;
waited for the trademark owner to express
interest in re-acquiring the domain name; and then responded with an offer to
sell the
domain name to the trademark owner for several thousand dollars. The Panel considers this more than ample
support for a finding of bad faith registration and use.
DECISION
Having
found all three elements required under the ICANN Policy to be present in this
case, the Panel concludes that the requested
relief shall be GRANTED.
Accordingly, it is Ordered that the <johrei.com> domain name
be TRANSFERRED from Respondent to Complainant.
David E. Sorkin. Panelist
Dated: April 12, 2003
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URL: http://www.worldlii.org/int/other/GENDND/2003/360.html