WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capcom Co., Ltd. and Capcom U.S.A., v. Richard Herbert, d/b/a "INSS"
Case No. D2000-0884
1. The Parties
The Complainants are; Capcom Co., Ltd,. of 3-1-3 Uchihiranomachi, Chuo-ku, Osaka, Japan, (First Complainant) and Capcom U.S.A, Inc. of 475 Oakmead Parkway, Sunnyvale, California 94086-4709, United States of America, (Second Complainant)
Complainants are represented by; Eric T. Fingerhut, Shaw Pittman, of 1676 International Drive, McLean, VA 22102, United States of America.
The Respondent is; Richard Herbert, d/b/a "INSS" of 71 Sydney Road, Sutton, SU SM12QJ, United Kingdom.
The Respondent is unrepresented.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: ""
The Registrar with which the domain name is registered is; R of 575 8th Avenue, New York, NY 10018, United States of America.
3. Procedural History
3.1 The Complaint was submitted electronically and received in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 27, and July 31, 2000, respectively.
3.2 On August 14, 2000, the Registrar verified:
(i) that the current registrant of the domain name is the Respondent;
(ii) that the Registrar's Service Agreement is in effect;
(iii) that the domain name is in "Active" status;
(iv) Respondent's Administrative Contact and Billing Contact is:
Richard Herbert
(v) The Technical Contact and Zone Contact is:
R
3.3 On August 8, 2000, all formal requirements for the establishment of the complaint were checked by the WIPO Center and found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On August 8, 2000, the WIPO Center sent Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by post and by facsimile to Respondent, the Administrative Contact, The Billing Contact and the Technical Contact;
(ii) by e-mail to Respondent, the Administrative Contact, the Billing Contact, the Technical Contact and to the postmaster at the domain name.
3.4.1 From the record it appears that:
(i) the posted and facsimile and e-mail transmissions to Respondent and the Technical, Administrative and Billing Contacts were delivered;
(ii) the e-mail to the Postmaster at the domain name was delivered.
3.4.2 The record shows that:
(i) the Center has satisfied the provisions of each of paragraphs (i)(A), (i)(B), (ii)(A), (ii)(B) and (iii) of Rule 2(a);
(ii) the domain name did not resolve to an active web-site;
(iii) Respondent has not notified any preferred address to WIPO Center.
3.4.3 The Panel therefore finds that the obligation imposed on the Center with respect to Notification of the Complaint and the Commencement of the Administrative Proceeding have been satisfied. The Panel further notes that Respondent's e-mail of August 8, 2000, to WIPO Center (see below) shows actual service on Respondent.
3.5 The due date for filing a Response was August 28, 2000. No Response was filed and Notice of Respondent Default was sent to Respondent and to the Technical, Administrative and Billing Contacts by post, facsimile and e-mail on September 13, 2000.
3.6 Panelist D.J. Ryan, having filed a Statement of Acceptance and Declaration of Impartiality and Independence the Panel was appointed on October 3, 2000.
3.7 The Panel therefore proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint.
3.8 Due to exceptional circumstances the due date for delivery of the Panel's decision was extended to November 2, 2000.
4. Factual Background
4.1 First Complainant is a Japanese corporation carrying on business as a producer of video games and animated television programs. Second Complainant is a wholly owned subsidiary of First Complainant and is licensed to use First Complainant's trade marks in U.S.A.
4.2 First Complainant developed a video game which is called "Mega Man". In 1994 Complainants released a version of the game under the name "Mega Man X". Complainants produced an animated series under the name "Mega Man" which was broadcast in U.S.A. from 1995 to 1998. First Complainant is the owner of the copyright in this program (Complaint Appendices C1 and C2). Complainants first used the trade mark "Mega Man" in the U.S.A. in 1987.
4.3 First Complainant owns registration of the trade mark "Mega Man" in U.S.A. and in 24 other countries (Complaint Appendix E) and has extensively used that trade mark and also the trade mark "Mega Man X" (Complaint Appendices D1 � D5).
4.4 No information is available in respect of Respondent or its business activities save that it appears to be associated with, or interested in, the operation of pornographic web-sites.
4.5 As of June and July 2000 the domain name pointed to adult web-sites (Complaint Appendices F and G). The domain name does not currently resolve or point to a web-site.
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name Respondent accepts the dispute resolution policy adopted by the Registrar from time to time. Registrar's current policy, set out in its 5.0 Service Agreement, is the Policy.
5.2 To succeed in its Complaint, Complainants must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the domain name has been registered and is being used in bad faith.
6. Parties� Contention
A. Complainants
6.1 Complainants contend that:
(a) the domain name is identical or confusingly similar to First Complainant's trademarks "Mega Man" and "Mega Man X" referred to in paragraphs 4.2 and 4.3.
6.2 Complainants contends that Respondent has no legitimate rights or interests in the domain name.
6.2.1 Complainants contend that Respondent has used the domain name to point to pornographic web-sites. Complainants have not licensed or otherwise authorised Respondent to use the domain name and Respondent uses it for the purpose of attracting customers to the pornographic web-site by creating confusion with Complainants' marks.
6.3 Complainants assert registration and use of the domain name in bad faith.
6.3.1 Complainants assert that Respondent registered the domain name only in February 2000, long after Complainants had established their reputation in the names "Mega Man' and "Mega Man X". Complainants contend that Respondent's conduct is particularly insidious in that Complainants' games are directed to children aged 6+. Complainants cite Case No. D2000-0102, Nokia Corporation v. N in support and refers to the dicta in that case that the adult nature of the site was an "aggravating element in the assessment of the bad faith with which the domain name was being used by the Respondent".
6.3.2 Complainants further cite the decision in CCA Industries v. Bobby R Doliz, Case D2000-0148 and Safeway Steel Products Inc, v. Caf� au lait, Case FA 943631.
B. Respondent
6.4 No Response was filed, however, in response to the e-mail of August 8, 2000 transmitting the Complaint Respondent replied to the WIPO Center on that day as follows:
"Chris,
I registered the name because it appeared to previously belong to a company that marketed adult sites.
I was not aware of any Trademark on the name Mega Man or Mega Man X. If the complainant had advised me that there were trademark issues then I would have had the name deleted immediately.
I will talk to r about the deletion of this domain.
Regards
Richard"
7. Decision and Findings
Identical or Confusingly Similar Trademarks
7.1 The identity of the domain name and the trade marks of Complainants speaks for itself. The Panel finds that the domain name is identical to Complainants' trade mark "Mega Man X" and confusingly similar to their trade mark "Mega Man".
Respondent's Rights or Legitimate Interests
7.2 Respondent has demonstrated no rights or legitimate interests. Respondent's failure to file a Response or to otherwise assert any such right or interest leads to a presumption that it is unable to show that such right or interest exists, (see Mondich and American Wine Biscuits v. Brown, Case No. D2000-0004). In the present case Respondent's e-mail of August 8, 2000 demonstrates that Respondent makes no claim to such rights or interest. The Panel finds Respondent has no legitimate rights or interests in the domain name.
Registration and Use in Bad Faith
7.3 Respondent has produced no plausible reason for his adoption of the domain name and his use of it to point to pornographic sites with which he appears to be associated, indicates that Respondent registered and is using the domain name with the intent for commercial gain, to attract users to the pornographic web-sites by creating a likelihood of confusion with Complainants' trade marks. The Panel adopts the view expressed in Nokia (supra) that the pointing of the domain name to a pornographic site is evidence of bad faith and accepts Respondent's submission that Respondent's conduct is all the more insidious in this case as Complainants' products are directed to children and its trade marks are well known to children.
7.4 Complainants therefore have established registration and use of the domain name in bad faith.
8. Decision
The Panel therefore concludes and decides:
(i) the domain name is confusingly similar to trademarks in which Complainants have rights;
(ii) Respondent has no rights or legitimate interest in the domain name;
(iii) the domain name has been registered and is being used in bad faith;
(iv) the domain name should be transferred to Complainants.
D.J. Ryan
Presiding Panelist
Dated: November 1, 2000
Full & Egal Universal Law Academy