DECISION

 

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.

 

Identical and/or Confusingly Similar

 

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.

 

Rights or Legitimate Interests

 

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.

 

Registration and Use in Bad Faith

 

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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