WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viz Communications, Inc., v. Redsun dba and David Penava
Case No. D2000-0905
1. The Parties
The Complainant is Viz Communications, Inc., a California corporation of 635 Bryant Street, San Francisco, California, United States of America.
The Respondents are Redsun, a Japanese corporation of 4-17-3 Shirogane, Minato-ku, Tokyo 106, Japan, doing business as , and Mr. David Penava of Primo K 102 2-16-16, Tomigaya Shibuya ku, Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name is "" and the Registrar is Network Solutions, Inc., of Herndon, Virginia, USA.
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 in hard copy on July 31, 2000. It named as a third Respondent Crisscross Inc., a Japanese corporation said to have participated in the acts of the first and second Respondents. On August 14, 2000 the Center drew to the attention of the Complainant the requirement for the Complaint to be submitted in electronic format and the need to correct certain deficiencies relating to the identity of the Registrar and to mutual jurisdiction.
On August 14, 2000, the Center sought registration details from the Registrar. On August 17, 2000, the Registrar stated that the registrant of the disputed domain name is Redsun; the Administrative and Billing Contacts are Mr. David Penava of Redsun; the Registrar�s 5.0 Service Agreement is in effect (which incorporates the Policy and requires the registrant to submit to a properly initiated complaint under the Policy); and that the status of the disputed domain name is "active."
On August 18, 2000, the Complainant filed in hardcopy an amended Complaint. On September 12, 2000, the Center drew to the Complainant�s attention further deficiencies requiring correction, relating to the remedy requested, mutual jurisdiction and the need to file an electronic copy of the Complaint. On September 20, 2000, an amendment to the amended Complaint was filed in hardcopy. In addition to correcting the deficiencies mentioned, it dismissed the third Respondent from the proceeding. On September 22, 2000, electronic versions of the Complaint, the amended Complaint and the amendment to the amended Complaint were received by the Center.
On September 27, 2000 the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee; printed out a copy of the disputed Web page; formally notified the two Respondents by post/courier, facsimile and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The formal date of the commencement of the proceeding was accordingly September 27, 2000. The last day specified in the notice for a response was October 16, 2000. On October 17, 2000, a Response was filed by email and on October 19, 2000, in hardcopy. Its receipt was acknowledged by the Center on October 20, 2000.
The Response was intituled, as was the Complaint, with the name of Redsun as a Respondent. The Response stated that Redsun was improperly identified as a party to the proceeding and treated the Response as if it were made by one Respondent, Mr. David Penava. The Respondent requested a three member panel.
By letter dated October 26, 2000, the Complainant sought leave from the panel to make further submissions for the purpose of rebutting the Response. On October 31, 2000, the Respondent objected to this course. The Center had previously informed the Complainant�s attorney that it was in the sole discretion of the panel whether it would consider a supplemental filing. On November 2, 2000 by email and, on November 3, 2000, in hardcopy, the Complainant submitted two declarations pursuant to its request.
On December 14, 2000, the Center notified the parties of the appointment of the panel, all three members having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated December 28, 2000 as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.
The language of the proceeding was English.
The panel is satisfied that the Complaint, as eventually amended, was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center�s assessment concerning the amended Complaint�s compliance with the formal requirements; the amended Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the Response was filed within the time specified by the Rules and the three-member administrative panel was properly constituted.
4. Factual Background (uncontested facts)
Since 1987, the Complainant has used the trademark ANIMERICA to identify Japanese comic books and magazines which it distributes and sells by subscription, mail order and retail stores to consumers, including children and adolescents, throughout the United States.
On August 6, 1997, the Respondent(s) registered the disputed domain name "" and shortly thereafter established the Web site as an adult, members only, pay-for-view site offering sexually explicit anime (stylized drawings).
On November 3, 1997, the Complainant applied for and, on June 16, 1999, was granted the registered United States trademark ANIMERICA, No. 2,252,892 in respect of publications.
Parties� Contentions
A. Complainant
[The amended Complaint is structured as a pleading under United States statute law of trademark infringement, trade dress infringement, unfair competition, trademark dilution and false designation of origin. It therefore contains some material irrelevant to the issues which the panel is required to determine under the Policy.]
Identity or confusing similarity
The disputed domain name is identical to a trade name or service mark in which the Complainant has rights.
Illegitimacy
The Respondents have no rights or legitimate interests in respect of the disputed domain name.
Bad faith
The disputed domain name was registered and is being used in bad faith.
The Complainant�s mark is distinctive. The Respondent�s wrongful activites commenced after the Complainant�s mark became associated with the Complainant�s name.
The Respondents chose the disputed domain name in a deliberate and intentional attempt to deceive the public into believing that the Web site was created by, approved by, sponsored by or affiliated with the Complainant, in order to benefit from, and take advantage of, the recognition of the Complainant�s trademark, to attract for financial gain Internet users to the Respondents� Web site, and to drive traffic to the Respondents� site by drawing users, including children, who had intended to visit the Complainant�s Web site.
At the time of establishing the Web site, the Respondents were aware of ANIMERICA as the registered and common law trademark of the Complainant. This is demonstrated by language on the Web site: "This site has no connection with ANIMERICA magazine."
The Respondents� Web site contains sexually-explicit, disgustingly pornographic adult-oriented cartoons, depictions and materials.
The Respondents are using the Web site to sell counterfeit products under the Complainant�s mark, particularly "selling counterfeit publications as the �Original ANIMERICA world famous Power Pellet� from the Respondents� Internet Web page ."
In June 1998 the Complainant�s attorneys sent cease and desist letters to the Respondents, who initially demanded payment to cease use of the Web address . When payment was not forthcoming, they continued their activities, ignoring further cease and desist demands.
B. Respondent
[The Respondent(s) variously refer to the Respondent (singular) and the Respondents (plural). The panel regards both Redsun and Mr. Penava as Respondents].
At the time it registered the domain name and started its business, the Respondent was completely unaware of the Complainant�s alleged trademark use, or its magazine. At that time, the Respondents were based in Japan. Mr. David Penava is Croatian, was raised in France, and has lived in Japan for over 20 years. He is not very familiar with the United States market.
The Complainant�s ANIMERICA magazine is based in San Francisco, California, USA, printed in Canada, published in English, and seems to be targeted at American audiences. There has been no reason proffered as to why the Respondents, residing in Japan, would be aware of the Complainant�s use of ANIMERICA as a trademark on a magazine produced in the United States and Canada, and marketed in the United States.
The Respondents devised the name animerica in July 1997 to refer to their product (stylized drawings generically known as "anime") by coming up with variations on anime and checking them with Network Solutions for availability as domain names. By market analysis, they determined that the largest Internet market would be in America, and thus they developed "". In August 1997, they registered and started using "" in commerce with a bona fide offering of services provided over the Internet. This was before the Complainant filed for its registered trademark in November, 1997.
The Respondent has been in business for over three years known only as "animerica" or "". All links to its Web site are listed simply as "animerica" or "".
Although the Respondent�s domain name is identical to the Complainant�s trademark, the goods and services are quite different in nature and neither would affect the other. The Respondent operates a pay-for-view site, targeting adults only and offering sexually explicit anime. The Complainant offers Japanese comic books and magazines to children and adolescents. There is no likelihood of confusion between the Complainant�s mark and the Respondent�s Web site.
The Respondents� site is protected by a warning splash page to prevent inadvertent exposure to the adult material on its Web site. Links are provided to download software to disable access to the site. Paid membership is required, and the Respondent�s billing companies carefully verify that potential members are adults.
The Respondent does not sell any publications or products through or in connection with the "" Web site. The Respondent�s domain name is only used on the Internet, and the only "advertising" comprises links on other adults-only sites.
The channels of trade are different: by its own admission, the Complainant targets children and adolescents and distributes its goods by subscription, mail order and retail stores (see ); the Respondent�s services are only provided through the Internet.
The conditions under which and buyers to whom sales are made are different: the Complainant�s goods are marketed to children and adolescents, and not available on the Internet; the Respondent�s services are for adults only, and completely Internet based.
The Complainant offers no proof: to substantiate its claim that the Respondents chose the name "" in order to deceive the public into thinking that the Respondent�s site was sponsored or approved by, or affiliated with the Complainant; of any widespread recognition of its trademark by consumers; that any traffic has been driven to the Respondent�s site based on confusion with the Complainant�s site; that the Respondents were aware of its use of ANIMERICA; that the Respondents intentionally advertised or sold publications using the ANIMERICA mark; that the Respondents� customers are even aware of the Complainant�s mark or products or vice versa; nor that its mark was in use before the Respondent registered its domain name.
As to the Complainant�s claim that the Respondent�s awareness of the ANIMERICA trademark is shown by "the language on the Web site itself that �This site has no connection to with ANIMERICA magazine�," that statement was placed on the home page after the Respondent received a cease and desist letter from the Complainant in June of 1998. This was almost a year after the Respondents established their Web site, not at the time of establishing it.
When the Respondents received the cease and desist notice from the Complainants, they were not interested in parting with their domain name, but responded by asking for an offer from the Complainant for purchase of the domain name. The Respondents had invested significant resources in the business they were operating using the domain name and were developing a successful business. The Complainant failed to respond to the Respondent�s offer in any meaningful way (they offered to pay the registration fee, which was legitimately rejected), instead replying with another threatening letter.
There are numerous other similar marks in use or pending as trademarks and domain names.
The Complainant claims the Respondents sell a product called "Original ANIMERICA world famous Power Pellet" from the Web site . A check of this Web site reveals that it is operated by a gay and lesbian group (see ), and has nothing to do with the Respondents, who have neither knowledge of, nor connection with, or "Original ANIMERICA world famous Power Pellet."
5. Discussion and Findings
Procedural issues
As to the Complainant�s request that its declarations in reply be taken into account, no provision is made in the Policy, the Rules or the Supplementary Rules for further submissions after the Response, except where sought by the panel under Rule 12. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.
In J.P.Morgan v. Resource Marketing (D2000-0035) the distinguished 3-member panel said:
"A number of panel decisions have considered a Reply or Rebuttal without comment. See, e.g., Cedar Trade Associates, Inc. v. Ricks, (FA93633); Aero-Turbine, Inc. v. Mcayman, Ltd., ( FA93675); Travel Services, Inc. v. Tour COOP of Puerto Rico, ( FA92524); Heelquick!, Inc. v. Goldman, et al., (FA92527). Because the distinguished panelists in these cases did not discuss this issue, the Panel in the present case does not have the benefit of their reasoning. However, looking at the Rules and the decision in Easyjet Airline Co., Ltd. v. Steggles, (D2000-0024), the Panel is persuaded that documents, whether designated "replies" or "rebuttals," are not called for in the Rules. Paragraph 12 of the Rules provides for additional submissions only at the Panel�s request, in its sole discretion. The Panel is persuaded by the reasoning of Easyjet, supra, that such unrequested submissions should not be considered. Id. at paragraph 5,I."
The panel in Easyjet refused to admit the material simply because there is no express provision in the Rules.
With respect to the learned panelists in JP Morgan, this panel does not interpret Rule 12 as precluding acceptance of additional uninvited submissions under the panel�s general powers conferred by Rule 10, particularly having regard to the panel�s duty under Rule 10(b) to ensure each party is given a fair opportunity to present its case. If a Respondent raises matter which the Complainant could not have been expected to have addressed in its Complaint, admission of an uninvited reply may be warranted in the interests of fairness. It would be an odd result if the panel may request a reply in such circumstances under Rule 12 but must refuse an uninvited reply on the same topic, simply because there is no express provision for such a reply in the Rules.
Accordingly, it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions.
In this case the panel does not accept the Complainant�s contention, in its letter to the Center dated October 26, 2000, that "the subsequent submissions are necessary to address the issues raised by the Response which were not previously disclosed to the Complainant, and which have been made material by the Response". The panel does not admit the declarations in reply because they address topics which the Complainant should have addressed in its Complaint, namely the strength of the Complainant�s mark; actual confusion; the Complainant�s intentions to expand into the Internet; bad faith registration and use and the content of the Respondent�s Web site before the Complaint was lodged.
Substantive issues
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely: the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and the Respondent has no rights or legitimate interests in respect of the domain name; and the disputed domain name has been registered and is being used in bad faith.
Rights
Although the Complainant did not apply to register its trademark until after the Respondents registered the disputed domain name, the panel is prepared to accept that, by then, after 10 years of use as the name of the Complainant�s publications, the name ANIMERICA had, in the field of printed publications in which the Complainant was engaged, become distinctive of the publications of the Complainant. The Complainant has therefore established that it had rights in the mark at common law at the time of registration of the disputed domain name and that, at the time of the initiation of this proceeding, it also had rights in the registered trademark in respect of publications.
Identity or confusing similarity
It is common ground that the disputed domain name is identical to the Complainant�s trademark ANIMERICA and the panel finds that it is both identical and confusingly similar to that trademark. The Complainant has established this element.
Illegitimacy
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant�s rights or legitimate interests to the disputed domain name. The Complainant has the onus of proof on this, as on all issues.
The critical question is whether the Respondents were aware of the Complainant�s trademark before they registered the domain name.
Although the name ANIMERICA is an invented word derived from a telescoping of the two descriptive words ANIME and AMERICA, it remains suggestive of those descriptive words and is thus a relatively weak trademark when used in connection with publications in the United States of America containing anime. It cannot, therefore, be assumed that the mark was so widely known and recognised that the Respondents must have had it in mind when they adopted the domain name.
The evidence of the Respondents that the domain name was devised to combine the concept of anime with the name of the largest likely market for their operations is plausible. The domain name is not inappropriate for their Web site.
Because of the relative weakness of the then common law trademark; the absence of evidence that the Complainant�s publications circulated outside the United States; and the evidence that the Respondents were in Japan and did not have experience in the United States, the Complainant has not satisfied the panel that the Respondents were aware of the trademark before the domain name was registered.
This Complaint was filed in July 2000. The dispute arose, however, when the Complainant sent its "cease and desist" letter in June 1998. By then the Respondent had been operating its Web site since August 1997. The operation of an adults-only sexually explicit Web site is not an illegitimate activity. The panel finds that the evidence establishes that, before any notice to the Respondents of the dispute, they used the domain name in connection with a bona fide offering of services, within paragraph 4(c) (i) of the Policy, and thus had a legitimate interest in the disputed domain name.
The Complainant has failed to establish this element.
Bad faith
The panel has found that the Complainant has not shown that the Respondents were aware of the Complainant�s trademark at the time the disputed domain name was registered. This finding is fatal to any finding of bad faith registration in this case. It follows that the panel rejects as unproven the assertion that the domain name was chosen deliberately and intentionally so as to divert to the Respondent�s Web site traffic intended for the Complainant.
Since June 1998 at the latest, the Respondents have been fully aware that the Complainant asserted rights to the trademark and sought from the Respondents that they cease and desist. Yet the Respondents have continued the activities to which the Complainant objects.
The questions arise whether, in these circumstances, the Respondents� conduct after June 1998 constitutes bad faith use within Policy 4(b)(iv) and, if so, whether this can transform the Respondents� registration into bad faith registration. This latter question was considered in Passion Group Inc. v. Usearch Inc. (AF 0250) as follows:-
"Panelist Sorkin addressed the relationship between paragraphs 4(a)(iii) and 4(b)(iv) in Shirmax Retail Ltd./D�taillants Shirmax Lt�e v. CES Marketing Group Inc., (AF-0104) as follows:
"The requirement of bad faith registration and use in paragraph 4(a)(iii) is stated in the conjunctive. Registration in bad faith is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose. The first three examples in paragraph 4(b) all refer to registration for various illegitimate purposes as evidence of registration and use in bad faith; but in each instance bad faith use may well be implicit in the act of registering a domain name, since all the improper purposes mentioned can be accomplished merely by passively holding a domain name.
"The fourth example (paragraph 4(b)(iv)), however, refers only to improper use, and does not appear to require that the domain name also have been registered in bad faith. This example thus appears to conflict with the rule set forth in paragraph 4(a)(iii). The language of paragraph 4(a)(iii) is clear, and the only reasonable interpretations are to regard the fourth example as a narrow exception to the preceding sub-paragraph�s conjunctive rule, or to apply the conjunctive rule as it is written and disregard the example entirely".
"The panel is assisted in forming a view as to how to interpret paragraphs 4(a)(iii) and 4(b)(iv) by the contrast between the introductory words of paragraph 4(c): "any of the following circumstances �shall demonstrate your rights or legitimate interests" and the introductory words of paragraph 4(b): "the following circumstances�shall be evidence of the registration and use of a domain name in bad faith".
"This contrasting language indicates that use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.
"This approach accords with the Policy by enabling a finding of bad faith registration to be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which the domain name was registered. Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith."
Here there is evidence that the domain name was registered for a permissible purpose without knowledge of the Complainant�s mark. Even if the panel were to reject all the Respondents� arguments as to the differences between the parties� fields of activity, channels of communication etc and were to find that, once the Respondents were put on notice of the Complainant�s claims, their continued use of the domain name constituted bad faith use, such use would not, in the view of the panel, suffice to prove that the domain name was originally registered in bad faith.
Accordingly, the Complainant has not established that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
7. Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel dismisses the complaint.
Alan L Limbury
Presiding Panelist
Ian Barker
Panelist
Irving Perluss
Panelist
Dated: December 22, 2000
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