WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enterbrain Inc. v Domain For Sale/Email Your Offers!
Case No. D2002-0009
1. The Parties
The Complainant is Enterbrain Inc. of Tokyo, Japan. The Complainantís authorised representatives are Katsufumi Mizuno, and Emi Sakamoto, Patent Attorneys, of the Hikari Patent Office.
The Respondent is "Domain For Sale/Email Your Offers!" of Radviliskis, Lithuania. The Respondent is unrepresented, and has taken no step in the administrative proceeding.
2. The Domain Name and Registrar
The domain name at issue is <famitsu.net> ("the domain name"). The Registrar with which the domain name is registered ("the Registrar") is DomainDiscover, of San Diego, California, United States of America. The domain name was initially registered on July 5, 2001, and subsequently registered in the name of the Respondent.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center on January 4, 2002. On January 9, 2002, the Registrar confirmed that the domain name is registered with it, and that the registrant is "Domain For Sale/Email Your Offers!" The status of the domain name was reported as "active", and the Registrar confirmed that the Policy applies to the domain name, and that the language of the registration agreement as used by the registrant for the domain name, is English.
Having satisfied itself as to procedural aspects of the Complaint, on January 16, 2002, the Center forwarded to the Respondent a form of Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint. Hard copies of the Notice and the Complaint were sent to the Lithuanian address and to an alternative address in Helsinki, Finland which had been supplied to the Center by the Complainant. (The Complainant had been in communication with a person called Nashi Imena, who was apparently controlling the use of the domain name and who had provided the Complainant with the Helsinki address and with contact telephone and fax numbers.) The documents were also faxed to the Respondentís fax number as advised by the Registrar and sent by email to the email addresses provided by the Registrar and the Complainant.
The Notice advised the parties that the formal date of the commencement of the administrative proceeding was January 16, 2002, and that the last day for the Respondent to send a Response to the Complaint, was February 5, 2002.
The hard copies of the Complaint and the formal Notification document were returned to the Center undelivered Ė the Respondent was apparently not known at either of the alternative physical addresses which had been provided by the Registrar and the Complainant.
Similarly, the electronic copies of the Complaint and the Notification document could not be successfully transmitted to <postmaster @ famitsu.net>. However, copies of the documents were successfully transmitted to the Respondent at the Respondentís facsimile number and by email to <quotes@Domain Research.org> (the Respondentís email address provided by the Registrar). An email sent to the Complainant on January 30, 2002, by Nashi Imena makes it clear that Nashi Imena was aware of the Complaint, and had authority to make decisions relating to the Complaint. In those circumstances, the Panel is satisfied that the Center has discharged its responsibility under Rule 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent.
The Respondent did not file any Response with the Center by February 5, 2002, and on February 7, 2002, the Center forwarded to the Respondent a formal Notification of Respondent Default.
The Complainant having requested a single-member Panel, and having paid the requisite fee, on February 11, 2002, the Center invited Warwick Alexander Smith, of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a form of Statement of Acceptance and Declaration of Impartiality and Independence.
On February 12, 2002, Warwick Alexander Smith advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Center formally appointed Warwick Alexander Smith as sole Panelist in the administrative proceeding, on February 12, 2002. In terms of paragraph 15(b) of the Rules, in the absence of exceptional circumstances, the Panel is therefore required to forward its decision by February 26, 2002.
The Panel considers that the Complaint complies with the requirements of the Rules and the Supplemental Rules, and that the Panel has been properly appointed.
No other proceedings relating to the domain name have been notified to the Panel.
The language of the administrative proceeding is English.
4. Factual Background
The Complainant carries on business as a publisher of magazines and books relating to TV games, computer entertainment and general entertainment. Its businesses also include software development, the planning and sales of toys and other goods, and the provision of an Internet-based information service.
The Complainant is a leading Japanese publisher of books and magazines relating to video games. It has used the "Famitsu" name for a magazine it publishes relating to video games, since 1996, and it presently issues 800,000 copies per annum of "Famitsu" in Japan. Since 2000, the Complainant has also published approximately 60,000 copies of a magazine called "famitsu-net", and it has published various magazines and books relating to video games which include in their names the word "famitsu" (e.g. "Famitsu 64", a magazine relating specifically to Nintendo 64 and Game Boy video games).
The name "Famitsu" is a contraction of the name "Famicom Tsushin", which was the name of a magazine published by the Complainantís parent company, ASCII Corporation, between 1986 and 1996. "Famicom" is itself an abbreviated version of the English expression "Family Computer", and "tsu" is reduced from the Japanese word "tsushin", which means communication, or the provision of information.
The Complainant also operates a website to provide its consumers with information on video games Ėthis website is at <famitsu.com>. The website advertises a new service, described as the "Famitsu Marketing Data Service", designed to provide information on Japanís game market directly to interested overseas companies. The expression <famitsu.com> had also been used on an Internet site by one of the Complainantís licensees, a French company, from March 2001.
The Complainant formerly owned the domain name, and until February 2001, it operated a website at the domain name, for the general purpose of promoting its products. However, the website was closed in February 2001, and, apparently as a result of an oversight, the registration of the domain name was not renewed when it expired on April 15, 2001.
The Complainant is the proprietor of the top level domain name <famitsu.org>, and its parent company ASCII Corporation is the proprietor of the domain name <famitsu.com>.
The Complainantís Registered Trademarks
The Complainant is the registered proprietor of the mark FAMITSU in Japan, for printed matter including magazines (Class 16). That registration has been effective since May 31, 1995. The registration was originally effected by the Complainantís parent company ASCII Corporation, but the trademark was assigned on June 22, 2000, to the Complainant.
The Complainant is also registered as proprietor of the mark FAMITSU in Japan in classes 35, 41, and 42.
The Complainant has Community Trademark registrations in Europe for the mark FAMITSU, in Classes 9, 16, 28, 38, and 41. The registration date is October 29, 2001. On the same date the Complainant registered the mark FAMITSU.COM as a Community Trademark.
The mark FAMITSU.COM has also been entered in the international register of marks maintained by WIPO under the Madrid Agreement and Protocol. The international registration is in Classes 35 (advertising, providing information on sales or sales ranking of video game software and other services) and 41 (providing information on amusement facilities, providing information on video game software via a global computer network, etc). The international registration under the Madrid Protocol is stated to enjoy priority under the Paris Convention, as from September 1, 2000.
The international certificate of registration under the Madrid Agreement and Protocol, designates a number of European countries, including Finland.
Applications for the mark FAMITSU.COM are pending in Japan and in a number of other countries.
The domain name was first registered on July 5, 2001. Initially, the domain name was registered to "Buy This Domain", with an Armenian address. On November 28, 2001, the domain name was registered in the name of the Respondent. Thereafter, the domain name has been linked to a portal website with links to what appear to be pornographic websites, and also to a website offering the domain name for sale. The Complainant has produced a page from the website at <famitsu.net> (downloaded on November 28, 2001), which is headed "Adult Links". There follows a warning to the effect that the web page contains links to "adult" material not appropriate to be viewed by minors. Beneath that, the web page advertises as a special offer, "adult" material from Amsterdam. A one week trial membership is offered at $2.95. Further down the web page, the viewer is invited to select from a range of other apparently pornographic websites (one is described as "Porn Tryout") at a cost of $2.95 for a 3-day password.
At the bottom of the web page, the viewer is invited to "Click Here to Buy This Domain Name". The Complainant has produced a copy of the corresponding web page, which is entitled "Make an Offer/Request a Quote Form". The form contains the statement:
"Any offer below $550 USD will be ignored!"
The Complainantís counsel contacted the Respondent by email on December 4, 2001, asking for a postal address. The email request was sent to "quotes@DomainResearch.org". The Complainant received a response the following day from Nashi Imena, providing the Helsinki address and inquiring if there was any particular domain the Complainantís representative had a question about.
A few days later, on December 10, 2001, the Complainant again checked the website at the domain name. The "Adult Links" page came up as before, with links available to a number of "adult" sites and the same link to a page providing an electronic address to which offers to purchase the domain name could be sent. On this occasion, the minimum purchase figure had been reduced from $550 USD to $450 USD.
There appears to have been no further communication between the Complainant and the Respondent, and this administrative proceeding was commenced on January 4, 2002.
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 that complainant, for valuable consideration in excess of [the respondentís] 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 respondentís] website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the respondentís] website or location or of a product or service on [the respondentís] website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Where, before any notice to [the respondent] of the dispute, [the respondentís] 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) Where [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) Where [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.
Paragraph 15(a) of the Rules requires the Panel to:
"Ö 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 5(e) of the Rules states that, if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.
5. The Partiesí Contentions
The Complainant says that it is the owner of the trademarks FAMITSU and FAMITSU.COM, and that the domain name is either identical or confusingly similar to one or both of those trademarks.
The Complainant says that it has not licensed the Respondent to use its marks or its name.
The Complainant contends that consumers might be confused into thinking that the Complainant owns the pornographic website, because of the Complainantís prior ownership of the domain name and its present interest in the <famitsu.com> domain name.
The Complainant contends that the Respondentís registration and use of the domain name are likely to cause confusion as to the ownership or affiliation of the domain name, and the activities promoted at the Respondentís pornographic websites. It says that its trademarks and the name of its goods and services have been polluted due to the pornographic website. The Complainant also says that the Respondent apparently registered the domain name with a view to selling it, and that, taking all of the circumstances into account, the Respondentís registration and use of the domain name meet the bad faith requirement of paragraph 4(a)(iii) of the Policy.
The Complainant also refers to the unreliable information provided by the Respondent to the Registrar. The listed name "Domain For Sale"/Email your offers!" was not sufficient to properly identify the Respondent, and, while the telephone number provided by the Respondent to the Registrar was a Finnish number, the listed postal address was an address in Lithuania. The Complainant refers also to the earlier registration of the domain name to an entity describing itself as "Buy This Domain", with an address in Yerevan, Armenia. The Complainant submits that the Respondent has been concealing its true identity, and that that is also an indicator of bad faith registration and use under the Policy.
In summary, the Complainant submits that the Respondentís offer to sell the domain name to a third party, to give discounts to the third party, and its provision of its pornographic website associated with the domain name, are together sufficient to meet the bad faith registration and use requirement of paragraph 4(a)(iii) of the Policy.
The Respondent has not made any submissions.
6. Discussion and Findings
Policy - Paragraph 4(a)(i) - Domain Name Identical or Confusingly Similar to Complainantís Marks
The Complainant clearly has rights in the FAMITSU trademark and service mark, and, apart from the generic suffix <.net>, the domain name is identical to that mark.
The Complainant also has rights in the FAMITSU.COM mark, through its Community Trademark registrations. Again, the only difference between that mark and the domain name, is the difference between the generic suffixes <.com> and <.net>.
In those circumstances, the Panel has no difficulty in finding that the domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, and that the Complainant has sufficiently proved the matters required to be proved under paragraph 4(a)(i) of the Policy.
Policy - Paragraph 4(a)(ii) - Respondent has no rights or legitimate interests in respect of the domain name
The Complainant has not authorized the Respondent to use its marks, whether as part of the domain name or otherwise.
It appears that the sole use the Respondent has made of the domain name has been as a link to a website or websites offering pornography for sale (on a pay for access basis). At the same time, the domain name has itself been offered for sale (presumably as part of a business of trading in domain names, as suggested by the Respondentís name).
There is no issue of the Respondent having been commonly known by the name "Famitsu", (Policy, paragraph 4(c)(ii)), and there is nothing to suggest that there might have been some bona fide reason for the Respondent choosing the word "famitsu" as a domain name. Specifically, there is no suggestion of the Respondent ever having offered (or made preparations to offer) any goods or services under or by reference to the name "famitsu"(Policy, paragraph 4(c)(i)).
Similarly, on the evidence produced by the Complainant, it cannot be said that the Respondentís use of the domain name has been "non-commercial", or "fair" within the meaning of paragraph 4(c)(iii) of the Policy. The word "famitsu" is a made-up word, consisting of reduced versions of an English expression ("family computer") and the Japanese word "tsushin". It is not a word you would select as a new domain name if you were not already aware of the word.
In the circumstances of this case, where the Respondent is clearly a sophisticated Internet user who apparently engages for profit in the trading of domain names, the Panel infers that the Respondent was well aware of the "famitsu" name and the "famitsu" site at <famatisu.com> at the time it became the owner of the domain name. In the absence of any other explanation from the Respondent, the Panel can only conclude that the Respondentís purpose in registering the domain name was to sell it for profit, and, in the meantime, to attract to its various "adult" websites Internet browsers looking for sites associated with the Complainant.
That could not be a use of the domain name "in connection with a bona fide offering of goods and services", and nor could it be a "legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers Ö" (paragraphs 4(c)(i) and (iii) of the Policy).
In these circumstances, and in the absence of any claim from the Respondent that it enjoys any rights or legitimate interests, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
Policy - paragraph 4(a)(iii) - Domain name registered and being used in bad faith
It appears to the Panel that this is a case falling into the category of bad faith registration and use described in paragraph 4(b)(iv) of the Policy. By using the domain name, the Respondent has created a likelihood of confusion with the Complainantís mark as to the source or affiliation of the Respondentís website which is linked to the domain name. In the Panelís view, that has been done intentionally by the Respondent, in an attempt to attract Internet users to his on-line location for commercial gain.
The Panel has found that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was chosen by the Respondent, at least in part, for the purpose of attracting to his "adult" websites Internet browsers looking for a site associated with the Complainant. The fact that access to the "adult" sites is available only at a cost to the viewer, is sufficient evidence that the domain name has been used to attract Internet browsers for commercial gain.
In those circumstances, the Panel is satisfied that the Complainant has proved that the domain name has been registered and is being used in bad faith.
For the foregoing reasons, the Panel decides that:
(a) The domain name is identical or confusingly similar to the trademarks and service marks FAMITSU, and FAMITSU.COM, in which the Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <famitsu.net> be transferred to the Complainant.
Warwick Alexander Smith
Dated: February 25, 2002