WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IMAO Corporation v. Jinsu Kim
Case No. D2017-2274
1. The Parties
Complainant is IMAO Corporation of Gifu, Japan, represented by Masashi Takenaka, Japan.
Respondent is Jinsu Kim of Hwaseong, Republic of Korea, self-represented.
2. The Domain Name and Registrar
The disputed domain name <imao.com> (the "Domain Name") is registered with Megazone Corp., dba HOSTING.KR (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 17, 2017, the Registrar transmitted by email to the Center its verification response confirming Respondent is listed as the registrant, providing Respondent's contact details, and indicating that the language of the registration agreement is Korean.
On November 21, 2017, the Center notified the Parties in both English and Korean that the language of the registration agreement for the Domain Name is Korean, and indicating that Complainant and Respondent should submit any requests and/or comments on this point by November 24 and November 26, respectively. On November 24, 2017, Complainant requested for English to be the language of the proceeding. Respondent did not reply by the November 26 deadline, so on November 27, 2017, the Center sent out a communication to both Parties indicating that given the submissions and circumstances of the case, the Center decided to (i) accept the Complaint as filed in English; (ii) accept a Response in either English or Korean; and (iii) appoint a Panel familiar with both languages mentioned above, if available. On November 29, 2017, Respondent submitted a late communication requesting that Korean be the language of the proceeding.
Additionally, in response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on November 24, 2017.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint in both English and Korean, and the proceedings commenced on November 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2017. At Respondent's request, the due date for Response was extended to December 21, 2017. The Response was filed with the Center December 21, 2017. Complainant submitted an unsolicited Supplemental Filing with the Center on January 15, 2018.
The Center appointed Christopher S. Gibson, Haruo Goto, and Moonchul Chang as panelists in this matter on February 2, 2018. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
As the Center had notified to the Parties upon receiving Complainant's Supplemental Filing, the Rules provide for the submission of the Complaint by Complainant and the Response by Respondent. No express provision is made for supplemental filings by either party. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings received from either Party; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.6.
On this occasion the Panel observes that Respondent has not objected to Complainant's Supplemental Filing. The Panel exercises its discretion under paragraph 10 and 12 of the Rules to accept Complainant's Supplemental Filing, as it relates to new issues or evidence, in particular, concerning Complainant's previous presence in Korea, the existence of a previous holder of the Domain Name, and circumstances in 2010 in which Complainant sought to purchase the Domain Name through an intermediary, all of which were not addressed in the Parties' earlier pleadings.
In view of accepting Complainant's Supplemental Filing, the Panel issued Panel Order No. 1 on March 21, 2018 in both the English and Korean languages, permitting Respondent to file a responsive supplemental filing. Respondent submitted its Supplemental Filing on March 28, 2018 in Korean. This submission was reviewed, with relevant substantive portions (i.e., Respondent's facts and contentions) summarized in English by one of the Panel members on behalf of the other members of the Panel.
4. Factual Background
Complainant is a Japanese company in the business of manufacturing, distribution, and the import and export of machine elements and related components. Nobuichi Imao founded and became the first president of Imao Foundry in 1935. Imao Manufacturing Co., Ltd. was established in 1961 to take over the business of Imao Foundry, and subsequently changed its name in 1989 to that of the current Complainant, Imao Corporation. According to Complainant, "IMAO" is commonly recognized as the name of Complainant.
Complainant obtained a trademark registration in Japan for the IMAO trademark on May 29, 1992 (No. 2413259), and has continued to own and use the registered mark since that time.
Complainant acquired the domain name <imao.co.jp> on September 22, 1995, and subsequently acquired and put to use the following domain names: <imao.jp>, <imao.info>, <imao.biz>, and <imao.asia>.
Complainant provides information about its company and products available for sale through its website at "www.imao.co.jp".
Respondent is an individual who resides in the Republic of Korea. Respondent has registered hundreds of domain names.
The Domain Name was initially registered on February 9, 2000 by a former employee of Complainant. Respondent purchased the Domain Name on March 30, 2006 through the auction company, Snapnames.com, for USD 2,150.00. The language of the registration agreement is Korean. The Domain Name resolves to a webpage displaying pay‑per‑click links and a banner stating "This domain may be for lease".
5. Parties' Contentions
A. Complainant
Complainant states that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. In particular, its trademark, IMAO, which is included in the Domain Name, is commonly recognized as the name of Complainant. Further, the Domain Name is identical to Complainant's IMAO mark.
Complainant also contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant states that in its past business activities, it has never heard of organizations, services or projects (other than itself) operating under the name of "IMAO.COM". Further, Respondent is not commonly known by the Domain Name and has no relationship with Complainant. Complainant has never granted Respondent a license to use "IMAO" in a domain name and in any other manner. Respondent does not use the Domain Name or the corresponding IMAO name to provide merchandise and services, and has not made preparations to do so. In sum, Complainant asserts that Respondent has no rights in respect of the name "IMAO".
Finally, Complainant claims that the Domain Name has been registered and is being used in bad faith. Complainant states that "IMAO" is not a common dictionary word, but instead is a proper noun for Complainant as a business entity that was named after the family name of Nobuichi Imao, the founder of Complainant.
Moreover, on the website to which the Domain Name resolves, Respondent indicates its intention to sell, lease, or transfer the Domain Name for profit by including the statements, "This domain may be for lease" and "imao.com may be for sale!". Complainant states that Respondent does not provide any meaningful content on the website, and there are no signs that Respondent has used the Domain Name or the name "IMAO.COM". Complainant asserts that any intentions of Respondent, other than to sell the Domain Name, are not indicated. Thus, Complainant contends there is no need for Respondent to use Domain Name at all. The only purpose that Respondent has for the Domain Name is to sell, lease, or transfer it for valuable consideration in excess of the cost that Respondent incurred to acquire the Domain Name.
In its Supplemental Filing, Complainant states that it had established a branch office in the Republic of Korea in October 1989 and operated that office until it was closed on March 31, 1994. After Complainant closed the Korean branch office, an employee of the office registered the Domain Name without the approval of Complainant. Complainant discovered this and investigated to seek the return of the Domain Name. Complainant contacted the GoDaddy Domain Buy Service ("GoDaddy"), and on July 30, 2010, GoDaddy informed Complainant that the Domain Name holder expressed interest in selling the Domain Name and asked for a minimum offer of USD 15,000 to open negotiations.
Complainant states that the former employee who had first registered the Domain Name, and Respondent who subsequently obtained the Domain Name, do not have rights or legitimate interests in respect of the name of "IMAO". Further, there is no need at all for them to use the Domain Name including the name "IMAO". Complainant contends that it is obvious that they registered and have used the Domain Name for the unjustifiable purpose of selling it at a high price.
B. Respondent
In his Response, Respondent does not dispute that the Domain Name is identical or confusingly similar to Complainant's registered IMAO trademark. However, Respondent claims that he has rights or legitimate interests in respect of the Domain Name. In his Supplemental Filing, he states that he purchased the Domain Name at auction in 2006 through Snapnames.com for USD 2,150, after competing with other global bidders. He states that he purchased the Domain Name because it is a rare term comprised of the four-letter combination, "IMAO", which stands for the famous English chat abbreviation for "in my arrogant option".
Respondent further claims that when he purchased the Domain Name, he was not aware of Complainant and its IMAO trademark. If he had been aware of Complainant, he claims he never would have bought the Domain Name.
Respondent further claims that he registered more than 900 domain names in 2010 with the registrar, GoDaddy.com, and that all of his domain names are arranged in the same manner to respond to any purchasing inquiry. He adds that he is also the owner of 107 domain names that are each comprised of four‑letter combinations (similar to the Domain Name) and he can supply a list of these 107 domain names if the Panel so requests.
Respondent states that he never intended to sell the Domain Name and he registered it in good faith. In particular, the wording "imao.com may be for sale" written on the parking website to which the Domain Name resolves does not indicate his intention to sell it; instead, Respondent claims it simply means that the Domain Name might be sold. When he received the email with the purchasing inquiry from the GoDaddy Domain Buy Service in 2010, Respondent states that he simply replied to GoDaddy that he did not want to sell the Domain Name for under USD 15,000. He states that he never directly contacted Complainant and never directly replied to Complainant. The prices indicated, such as USD 10,000 or USD 15,000, were set for any domain name at the domain name agency and were never set as the price for the particular Domain Name.
6. Discussion and Findings
A. Preliminary Issue: Language of Proceedings
Complainant has requested that English be the language of these administrative proceedings, while Respondent, in its late-filed submission, has requested that the proceedings be conducted in Korean. Complainant asserts that it is a Japanese company and has no employees who are familiar with the Korean language, and thus would need to find a translator and incur costs to translate its submissions. (Complainant had initially stated that it would translate the Complaint into Korean, but upon review of exchanges with the Center, the record indicates that it never did so). Complainant urges that using Korean would cause a sense of unfairness, as the language would become a barrier to an expeditious proceeding. In countries outside the Republic of Korea, few people are familiar with the Korean language. On the other hand, many people are familiar with English all over the world, and it is fair and appropriate that the language of the administrative proceeding be English.
Respondent in its late submission requested that the Panel proceed using the Korean language in this case because it is the language of the Domain Name's registration agreement and he does not understand English. He also requested that the Panel render its decision in Korean because he might use the decision if he chooses go to a Korean court.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, the default language of an administrative proceeding is the language of the registration agreement, but this is subject to the authority of a panel to determine otherwise. Reflecting the objective of conducting the proceeding with due expedition, paragraph 10 of the Rules vests a panel with authority to conduct the proceeding in a manner it considers appropriate, while also ensuring that the parties are treated with equality and given a fair opportunity to present their respective cases. See WIPO Overview 3.0, section 4.5.1.
The Panel observes that against this background, prior UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios may include, for example, (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant's mark, (iii) any content on the webpage under the disputed domain name, (iv) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (v) the credibility of any submissions by the parties and in particular those of the respondent, and (vi) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. WIPO Overview 3.0, section 4.5.1. In addition, where it appears the parties reasonably understand the nature of the proceeding, UDRP panels have also determined the language of the proceeding/decision taking account of the panel's ability to understand the language of both the complaint and the response such that each party may submit pleadings in a language with which it is familiar.
Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in these administrative proceedings. Moreover, each Party has been able to submit their pleadings in a language with which it is familiar. Complainant submitted its Complaint and Supplemental Filing in English, while Respondent submitted its Response and Supplemental Filing in Korean. Given the language capabilities of the Panel's members, the Panel has been able to understand the language of both the Complaint and the Response. The Panel also observes that Respondent, although he claimed he did not understand English, stated in his Response that he had registered the Domain Name, not for its meaning in the Korean language, but because the acronym "IMAO" was an English chat abbreviation for "in my arrogant option". Further, the content on the website to which the Domain Name resolved was in English, including the statement that the Domain Name was being offered for sale or lease. Finally, the Panel notes that Respondent's submission requesting that the proceedings be conducted in Korean was submitted after the deadline established by the Center for the parties' submissions on this point.
The Panel concludes, in view of all of the above, that it is appropriate to render this Administrative Panel Decision in English.
B. Merits
As has been recited in many UDRP decisions, in order to succeed in his claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
(1) Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its distinctive IMAO trademark, based on its trademark registration and the longstanding use of its IMAO mark, which stems from the name of Complainant's founder. Further, the Panel determines that the Domain Name is identical to Complainant's mark, as the Domain Name incorporates the mark in its entirety and adds no other element. The Panel also observes that Respondent does not contest this element.
Accordingly, the Panel finds that that the Domain Name is identical to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.
(2) Rights or Legitimate Interests
Regarding the second element of the Policy, section 2.1 of WIPO Overview 3.0 states that "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Here, the Panel finds that Complainant has made out a prima facie case. The Panel finds that Complainant has not authorized Respondent to use its IMAO trademark in the Domain Name or otherwise; that Respondent is not commonly known by the Domain Name or the name IMAO; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use; nor used it in connection with a bona fide offering of goods or services. Instead, the evidence indicates that Domain Name has been used in connection with (and currently resolves to) a pay-per-click parking page, with several links and a banner indicating the Domain Name is offered for sale or lease.
In an effort to rebut Complainant's prima facie case, Respondent (in support of his contention of having rights or legitimate interests in respect of the Domain Name) makes two arguments. First, he claims that, despite not understanding English, he registered the Domain Name because "IMAO" is a rare term and an acronym for an English chat abbreviation for "in my arrogant option". To support this point, Respondent submitted a copy of a webpage from The Online Slang Dictionary (for American, English and Urban slang), which indicates that this particular acronym was added to that dictionary on September 23, 2012, and March 11, 2017. The Domain Name, however, was initially registered on February 9, 2000 (according to the WhoIs record), well before either date. Further, Respondent indicates that he acquired the Domain Name at auction on March 30, 2006; this date is also well before the IMAO acronym was added to The Online Slang Dictionary, on which Respondent relies. Thus, it is not clear to the Panel whether the IMAO acronym had become known and used commonly as a chat abbreviation (or otherwise) by 2006, at the time when Respondent purchased the Domain Name. This raises some doubt about Respondent's particular argument in this regard, especially since Respondent maintains he does not speak English.
On the other hand, as a second line of argument, Respondent has also provided information that he has registered hundreds of domain names, including owning 107 four-letter domain names, and that he was unaware of Complainant when he bought the Domain Name at auction. This information suggests that Respondent might be a professional domainer; however, Respondent has failed to provide enough information to explain or confirm this possibility. In fact, Respondent seems to indicate somewhat confusingly in his submissions that he never intended to sell the Domain Name, which if true might weigh against him being considered a professional domainer.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.10.2, for a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent's evidence supporting its explanation for its registration (and any use) of the domain name should indicate a "credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant's mark". Further, WIPO Overview 3.0, section 2.11, states that panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.
On balance, the Panel finds, in view of all of the evidence and the current use of the Domain Name resolving to a webpage displaying pay-per-click links, that Respondent has failed to submit adequate information or explanation to rebut Complainant's prima facie case showing Respondent's lack of rights or legitimate interests in respect of the Domain Name.
The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
(3) Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark".
Here, the Panel finds that Complainant has failed to establish bad faith registration and use. With respect to bad faith registration, the Panel determines, on the balance of the probabilities, that it is likely Respondent acquired the Domain Name at auction in 2006 – not in an effort to target Complainant's IMAO trademark – but because the Domain Name is comprised of a four-letter combination that was considered inherently valuable by Respondent. In this regard, there is insufficient evidence to indicate that Complainant's IMAO trademark had acquired significant reputation or goodwill in the Republic of Korea, such that Respondent should have been aware of the mark. The Panel observes that Complainant had not registered its IMAO trademark in the Republic of Korea. Further, Complainant had closed its branch office there on March 31, 1994, approximately 12 years before Respondent acquired the Domain Name at auction. Finally, the evidence does not show any connection (or interaction) between Respondent and Complainant's former employee, who had originally registered the Domain Name in February 2000 without Complainant's approval. Instead, Respondent has stated in both of his submissions that he was unaware of Complainant's IMAO mark when he purchased the Domain Name through the Snapnames.com auction. Further, Respondent has indicated that he has registered (or otherwise acquired) hundreds of domain names, including 107 four-letter domain names. Thus, there is insufficient evidence to indicate that Respondent acquired the Domain Name in 2006 in an effort to take unfair advantage of or otherwise abuse Complainant's IMAO mark.
Further, regarding bad faith use, as discussed above, the Domain Name has been used in connection with a pay-per-click parking webpage where it is offered for sale or lease. However, none of the links on the pay‑per-click page refer to Complainant or its products, or to a competitor of Complainant. Finally, Respondent's reply to GoDaddy in 2010 that he did not want to sell the Domain Name for under USD 15,000 does not support bad faith use. From the evidence presented, there is no indication that Respondent was even made aware by GoDaddy (as intermediary) that Complainant was the potential buyer of the Domain Name at that time.
In conclusion, the Panel determines that, in view of the particular circumstances of this case, Complainant has failed to demonstrate that the Domain Name was registered and is being used in bad faith.
Accordingly, Complainant has failed to satisfy the third element of the Policy
7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Presiding Panelist
Haruo Goto
Panelist (Dissenting)
Moonchul Chang
Panelist
Date: May 8, 2018
Dissenting Opinion
1. Paragraph 15(c) of the Rules shall not apply any modification to "ADMINISTRATIVE PANEL DECISION IMAO Corporation v. Jinsu Kim,WIPO Case No. D2017-2274" checked by the WIPO Arbitration and Mediation Center.
The rule of majority anticipates due process of law. However, this administrative proceeding does not comply with principle of due process of law. This administrative proceeding has been preceded contrary to the Rules. I can't agree with this draft decision.
(i) Although the Respondent's supplemental filing has submitted after the language of the administrative proceeding has determined in the panel decision. I have not received an official translation into the English language of the Respondent's supplemental filing yet.
(ii) Further it is admitted that "These fact were not established before we received Respondent' supplemental filing" stated in Gibson's Summary. But I have not receive the official translation into the English language of the Respondent' supplemental filling yet.
(iii) It is secure to legal stability of the administrative proceeding. It shall construe that Paragraph 15(c) of Rules shall not be applied above the "ADMINISTRATIVE PANEL DECISION". Said Panel Decision that the fruit of the cooperation system with respect to the Panel and WIPO Center shall be strictly respected. At least for the amending of the important matters in the decision thereof, the principle of unanimous vote of all Panelists shall be obeyed.
2. The majority decision overlooks a very important point.
(i) There has been no evidence denying that Complainant's former employee has obtained present domain name with bad faith. Such conduct by Complainant's former employee is inconsistent with good sense.
(ii) Further Respondent take over present domain name as such that the former employee has obtained bad faith. Therefore, Respondent has obtained present domain name with bad faith.
(iii) It does not come to exist due to succession of the present domain name that Complainant's former employee has registered the present domain name with a bad faith. Further it is not justified at the auction that the Respondent has obtained the present domain name with a bad faith. According to the Japanese Supreme court decision the assignee obtained the assignor's legal status as a resulting from the succession to the subject.
(iv) Respondent has taken over the present domain name as such resulting from above fact or circumstances. It is not qualified for justifying that the fact "Respondent was unaware of Complainant's IMAO mark when he purchased the Domain Name at auction" (hereinafter referred to "the fact A"). The fact that he has obtained the present domain name with bad faith (hereinafter referred to "the fact B"). The fact A and the fact B are different in nature. Such Respondent has obtained the present domain name with bad faith.
(v) In Japan, a succession means a person (A) succeed the rights and obligations of another person (B), and in terms of its rights and obligations, he will be in the same position of status as that person (B) in terms of law ("Legal terminology dictionary" by YUHIKAIKU PUBLISHING CO. LTD).
(vi) The summary of the judgment of the Supreme Court is as follows: "In general, the assignor transfers all the rights that the assignor has about the subject matter to the assignee, and the assignee acquires all the rights that the assignor had (Judgment on July 18, 1997, case number Heisei 7 (1995) (O) 1988)
(vii) The Japanese Tokyo High Court decided that the assignee obtained the assignor's legal status as a result from the succession to the articles. That is, "In the case of acquiring a trademark right, the fact itself concerning the previous non-use situation of the trademark, for example, if there is a fact that the specified goods are not used for a certain period of time, the fact itself is not to be extinguished. The transferee also inherits such trademark right accompanied by such facts or under such circumstances, as a result accompanying the trademark right. Therefore, due to the transfer of the trademark right, the fact of previous non-use is not extinct. It shall construe that the period of previous non-use is not disregarded and it is not newly calculated in relation to the transferee" (Tokyo High Court Showa 56 (1981) November 25th, case number Showa 55 (1980) No. 329).
Further, it is not proved that Respondent has been used present domain name good faith. The Respondent claims to use with good faith, but it is insufficient to trust as a whole. The respondent has not discharged his obligation under paragraph 2 (b) or (c) of the Policy.
Haruo Goto
Panelist (Dissenting)
Date: May 8, 2018
