WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bunkasha Publishing Co. Ltd. v. Xman Productions
Case No. D2002-0781
1. The Parties
The Complainant is Kabushiki Kaisha Bunkasha (doing business as Bunkasha Publishing Co. Ltd. for overseas) of Tokyo, Japan, contact person Ms. Nobuto, Kayo, c/o Kabushiki Kaisha Bunkasha.
The Respondent is Xman Productions of St. John�s, Antigua and Barbuda, represented by Mr. Creswell Netto of Brisbane, Australia.
2. The Domain Name and Registrar
The Domain Name at issue is . The Registrar is Network Solutions Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on August 20, 2002, and a hardcopy was received by the Center on August 27, 2002. The Center acknowledged the receipt of the Complaint on August 21, 2002.
On the same day, the Center sent to Network Solutions a request for verification of registration data and Network Solutions confirmed that it is the Registrar, that Xman Productions is the Registrant of the domain name , and that the administrative, technical and billing contact is Tokyo Girl Network, St. John�s, Antigua and Barbuda.
Mainly due to the fact that the Respondent�s address as listed on the WHOIS was incorrect and the subsequent request of the Respondent that all hardcopies of the documents be sent to Mr. Creswell Netto, a representative of the Respondent in Australia, there was some exchange of correspondence and some delay before the Case Manager could, on September 6, 2002, verify that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Panel is satisfied this is the case.
On September 6, 2002, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On September 24, 2002, the Center received a Response by fax, and on September 26, 2002, by e-mail, and on September 30, 2002, a hard copy of the Response from the Respondent.
On October 2, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel�s decision is October 16, 2002.
4. Factual Background
A. Complainant
The Complainant was established in 1948 and incorporated in 1950, and has been publishing, editing and marketing books and magazines, such as ASAYAN, YOUNG, S.O.S. and the Japanese edition of the PENTHOUSE Magazine, as well as video games in Japan and is according to its submissions a well-known company in that country. It can be deduced from the promotional material submitted by the Complainant, including a tape with TV-spots for the before mentioned magazines and for video games, and from the amount of advertising spending in the years since 1994, that the Complainant is at least known in Japan and that it can be considered to be a leading Japanese publishing company.
The Complainant is the owner of several Japanese trademark and service mark registrations, dating back to the years 1994 � 1996, for the trademark "Bunkasha" written in Japanese characters, for advertising in 35, telecommunicating by computer terminals in class 38, developing and printing of films in class 40, and photography, printing and designing of computer programs in class 42. Recently, it has also applied for several registrations in Latin characters, in 2001, for registration of the mark BUNKASHA ONLINE in class 41 in Japan and for the mark BUNKASHA in the United States, and in 2002, for the marks BUNKASHA GAMES (device) and BUNKASHA ONLINE in the United States, all applications for computer related activities.
All (registered and pending) marks are currently used by the Complainant. Particularly in the TV-spots promoting the above mentioned magazines the mark "Bunkasha" in Japanese characters is always prominently shown at the end of the video spot, accompanied by the voice of a speaker loudly pronouncing "Bunkasha." The mark "Bunkasha" in Japanese characters is also used on books, magazines and photo collections that the Complainant publishes and sells to the public.
The Complainant has sold books, magazines and entertainment digital photograph collections through the Internet since 1996. According to its submission that has not been contested by the Respondent, it has used the domain names for its video game business and for its BUNKASHA ONLINE business since 1996. Furthermore, the domain name leads to a homepage, containing amongst other things a company profile (also in English) with links to the two before mentioned websites. On all these websites the marks of the Complainant are also prominently shown.
On May 30, 2002, the Complainant asked the Respondent per e-mail for the reason of its use of the domain name and on June 3, 2002, it asked the Respondent to stop using that domain name.
B. Respondent
The Respondent registered the domain name on September 15, 1997. It purports that the name "Xman Productions" indicated in the registration data is a trading name of Bunkasha Corporation, a company incorporated in Antigua and Barbuda on March 3, 1999. However, the Respondent did not submit any evidence that would prove that Xman Productions and Bunkasha Corporation are the same company. Also the address indicated on the letterhead of Bunkasha Corporation, under which the Response is submitted by Mr. Creswell Netto, is not identical to the address of Xman Productions. The address "c/o ABI Trust Ltd." also indicates that "Bunkasha Corporation" is not an active company, at least not in Antigua and Barbuda. Furthermore the contact details of Mr. Netto are: c/o Expac Pty Ltd. Also Mr. Johnson, who seems to be a senior officer if not the owner of the Respondent, in his correspondence with the Complainant (which will be discussed later) and when informing the Complainant and the Center that all correspondence should (in view of his absence on a trip to Europe) be addressed to Mr. Netto, used the e-mail address of another unit (Tokyo Girl Network, the administrative contact of the domain name registration). Nevertheless, the Respondent (respectively the persons behind the Respondent) clearly exercises an on-line business and the Panelist is prepared not to refuse the Response on formal grounds but to accept the Response submitted by Mr. Netto on the Bunkasha Corporation letterhead as the Response of the Respondent.
The Respondent submits that the domain name has continuously been used since September 28, 1997, by the Respondent and its predecessors in trade in its business of providing subscription-based access to on-line adult content for the "Bunkasha site." The Respondent further submits that in mid-1998, Xman Productions (a partnership of individuals) entered into a joint venture arrangement with another partnership of individuals trading under the name Tokyo Girl Network and that both together commenced trading under the name "Bunkasha." The Respondent continues: "The Respondent, Bunkasha Corporation was incorporated by the individuals referred to above on March 3, 1999. On its incorporation, the Respondent acquired the assets of the Bunkasha business, including the Domain Name and the goodwill associated with the Bunkasha Site." However the Respondent filed no evidence for these submissions and, in particular, no change of ownership (or of address) of the domain name holder to Bunkasha Corporation has been registered at Network Solutions. Therefore, for the Panelist, the Respondent in the present proceeding continues to be Xman Productions, which may be a Partnership of individuals. This conclusion is not influenced by a letter of Tristan Services Inc, submitted by the Respondent as annex B1, since the contents of that letter is rather confusing. In its first paragraph it talks about the site "", then run by "Tokyo Girl Network, and now doing business as Bunkasha Corporation." In the second paragraph the letter again refers to work with and to the advertising manager, Mr. Netto, and only in the third paragraph the letter refers to "many of the sites owned by "Bunkasha Corporation."
The Respondent furthermore submits that the Bunkasha site is one of a number of commercial Internet websites which have been developed and are maintained by the Respondent and that it is its main adult-content Internet website. The site apparently receives many hits per day and is accessed, according to the Respondent, by about 100 subscribers per day. It seems to contain an enormous volume of hard-core pornographic pictures and movies.
Whilst the Panelist could convince himself, by visiting the site of the Respondent and other related sites (such as "", cited by the Complainant) that there exists a network of sites, which apparently are entertained by the same persons (such as Mr. Johnson and Mr. Netto), there is absolutely no proof that all these sites belong to Bunkasha Corporation (a company which, due to lack of evidence, the Panelist can only assume exists at least as a registered company in Antigua and Barbuda) or to the Respondent in this proceeding, Xman Productions. It is actually more likely that in reality all these sites, including the site "www.", belong either to certain individuals and not to any legally incorporated unit, or to Orient Entertainment Corporation, a company incorporated in Australia (the Panelist will deal with this company later). Anyhow, neither Bunkasha Corporation nor Xman Productions appear as company names on any of the sites.
Following the e-mails of the Complainant, Mr. Johnson replied (for his "boss" who was out of "the" country; whatever country is meant) in the name of Bunkasha Corp. / Tokyo Girl Network and offered three solutions to the problem that a site already exists in Japan with the same domain name:
- both parties put a disclaimer on their respective sites, clearly stating that the sites/companies are not related in any way
- cross advertising with banners
- arranging for a sale and transfer of the domain name to the Complainant.
On inquiry about the costs to sell and transfer the domain name, Mr. Johnson replied that his boss advised as follows:
1 million US$ for the domain name and 200,000 US$ for the domain name , mentioned in that context for the first time.
5. Parties� Contentions
A. Complainant
The Complainant submits that (1) the domain name 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; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent submits that the domain name is not confusingly similar to the trademark "bunkasha", that it has rights in the domain name and that it has not registered and is not using that domain name in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
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.
1) Confusing Similarity with a Mark in which the Complainant has Rights
The Complainant has rights in a mark written in Japanese characters, of which the transliteration into Latin script is "Bunkasha", and which is also pronounced in line with that transliteration. When visually comparing the registered mark of the Complainant and the domain name of the Respondent there is of course no identity and also no similarity. Nevertheless, the domain name must be considered to be confusingly similar to the Complainant�s trademark for the following reasons: The domain name is identical to the transliteration of the mark of the Complainant, which the Complainant has been using for many years (the gTLD indicator .com cannot be taken into consideration when judging confusing similarity). Also in pronunciation there is identity. Furthermore, taking into account use of the mark and of the domain name on the Internet there is at least confusing similarity: Until Spring 2001, domain names could be created only by using a restricted number of characters, consisting of Latin script characters. A Japanese company, intending to use its Japanese script trade name or mark as domain name was therefore forced to use the Latin script transliteration of its name or mark for that purpose. Exactly that pattern was followed by the Complainant, as by many other Japanese companies, by using the domain name in the ccTLD for Japan and by using the domain name for its video game business. Since the website of the Complainant under that domain name is addressed to Japanese customers only, its content is, as concerns text, in great majority composed of Japanese characters. Nevertheless Japanese visitors to that site know that they must use the transliterated version of the Complainant�s mark "Bunkasha" if they want to visit the site, where the mark of the Complainant is prominently shown both in Japanese script and in transliteration. If such actual or potential clients of the Complainant try to visit its website by using the term "bunkasha" in the .com domain, they arrive at the Respondent�s website. Since at that website no hint to the person(s) entertaining the site is given (contrary to the submission of the Respondent that it recently had included a clear statement in its website), visitors may therefore believe that they have arrived at a site of the Complainant or a company related to the Complainant or at a site that is sponsored by the Complainant. Even if the Respondent offers exclusively hardcore pornography at that site, visitors may still believe that there is a connection to the Complainant, since the Complainant shows on its site "www.", amongst other things, pictures of scantily dressed girls, whereby these pictures are not related to pornographic activities. Visitors may therefore believe that the Complainant or a company related to it is now extending its business activities to offer hard-core pornography or that the Complainant sponsors that website.
The domain name is therefore confusingly similar to a mark in which the Complainant has rights. The question, whether the Complainant also has rights in its trademark applications in Latin script and whether the domain name of the Respondent is confusingly similar to these marks, applied for registration in Japan and in the United States, need not therefore be dealt with.
2) Legitimate Rights or Interests in Respect of the Domain Name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. However it refers to the name of the company Bunkasha Corporation, which was incorporated in Antigua and Barbuda on March 3, 1999, and which, according to its submission, is "the Respondent." It also is of the opinion that it has been commonly known by the domain name, even if it has acquired no rights in a mark, and that it is using the domain name for a bona fide offering of goods and services.
As the Panelist has stated earlier, the Respondent is Xman Productions and not Bunkasha Corporation. Also, both Xman Productions and Bunkasha Corporation apparently have no business activity in Antigua since, according to the submission of the Respondent, Xman Productions has become a trading name of Bunkasha Corporation and the address of the latter company refers to the address of another company (c/o ABI Trust Ltd.). Both entities do not seem to have a place of business in Australia, where apparently the persons who are acting for the Respondent are located; at least the Respondent has submitted no arguments or evidence for such place of business. Consequently the incorporation of an inactive Bunkasha Corporation in 1999 cannot, under the circumstances, justify the registration in 1997 of the domain name that continues to stand in the name of Xman Productions, an apparently inactive unit.
The Respondent has also failed to prove that it has been commonly known under the domain name . Websites offering pornographic pictures and films are accessible under numerous domain names, which are often interlinked with many other websites, making it difficult for a visitor to leave the site without leaving the Internet (this is also true for the website-network of which the "Bunkasha site" is a part) and visitors of such websites do not generally expect the website address to be a business name identifying an entity that is offering the respective services. If any, such expectation would more likely have developed for the website accessible under "", and being promoted as the Tokyo Girl Network, since this site provides links to many other sites, which are listed at the site and are separately accessible under their respective domain names, including the Bunkasha site, which is only one of more than 10 different sites offered by that network. Whilst the domain is certainly known to the clientele of the Respondent as a pornographic website, this does not mean that the site has been commonly known as such and even less that the Respondent (be it Xman Productions or Bunkasha Corporation) has been commonly known under that name. Apart from the pornographic website, the only activities for which the Respondent has submitted evidence are its business relationships with the service providers Hurricane Electric, respectively ServerMasters Corporation (it is interesting to note in that context that according to the Respondent originally the site was co-administered by Xman Productions of Santa Barbara, California, USA, a place where Global ServerMasters Corporation is also located). In that context it is surprising that the Respondent submitted an Invoice addressed by Global ServerMasters on August 27, 1998, to Bunkasha Corporation. This is contradictory for two reasons: First according to the Respondent the site was moved to Hurricane Electric and had only started to be administered by ServerMasters Corporation (which seems to belong to the Hurricane Electric group) in November 1999 and, even more importantly, the Bunkasha Corporation was only incorporated in March 3, 1999 (despite the fact that, according to the Respondent, the joint venture between Xman Productions and Tokyo Girl Network had begun to "trade" under the name "Bunkasha" since mid-1998, it did not and legally could not trade under the name Bunkasha Corporation!). This apparently wrong invoice (which seems to have been transmitted to "Bunkasha Corporation" in September 2002, together with another invoice dated January 31, 2001), does not increase the value of the evidence submitted by the Respondent. Nevertheless, all submitted evidence relates to correspondence with interlinked companies. In conclusion, Bunkasha Corporation cannot be considered to have been commonly known under the domain name , and there is no doubt that the Respondent Xman Productions has not been commonly known under that domain. If even for the Panel it is difficult, based on the facts submitted by the Respondent, to find its way through the labyrinth of companies and addresses playing a role in this game, how can an Internet visitor to the Respondent�s website consider the Respondent to be commonly known under the domain name ?
Another aspect also shows that the Respondent cannot have become commonly known under the domain . As mentioned above, paragraph 4B, the Respondent has offered the domain name for sale. That domain name leads, as does the domain name , visitors to the �B Network�, however it is registered in the name of Orient Entertainment Corporation, having its place of business in Brisbane, Australia. Even if the address listed is not identical to that of Mr. Netto, the Representative of the Respondent, it is at least located in the same city in Australia (and its technical and administrative contact is ServerMasters Corporation, Santa Barbara, USA). Who should therefore be commonly known under the name, Bunkasha Corporation, the Respondent Xman Productions or Orient Entertainment Corporation, which in view of its location in Brisbane is more likely to be the real business of the persons behind the Respondent? The fact that ServerMasters Corporation is the technical and administrative contact of the domain name at the same time shows that the evidence of correspondence with that company submitted by the Respondent is no indication in favor of the Respondent�s submission that it has been known or even commonly known under the domain name . Also it is interesting in the context that the domain name was registered by Orient Entertainment Corporation one day after the purported incorporation of Bunkasha Corporation in Antigua and Barbuda. This is another indication supporting the assumption that Bunkasha Corporation has never really been an active company (otherwise no doubt the domain name would have been registered in the name of that company).
Finally the Respondent cannot rely on Paragraph 4c(ii) of the Policy, since the offering of services which no doubt had started before any notice to the Respondent of the dispute, cannot be considered to be bona fide:
Apart from the gTLD indicator .com, the domain name consists of the transliteration of the trademark of the Complainant, registered and used already at the time of the domain name registration as a mark in Japanese characters, and also used by the Complainant in its transliteration "Bunkasha" as an Internet address for its e-commerce business that existed since 1996. The Respondent submits that it had no knowledge of the Complainant, who also is trading under a name, of which the essential distinctive part is "Bunkasha" (in Japanese characters and in its transliteration into Latin script). The Respondent furthermore submits that the domain name "Bunkasha" was originally created for a website as a tribute to two popular Japanese models (Bunko Kanasawa and Kaori Shimamura) by combining certain (capitalized) letters of their names: BUNKo KAnasawa and KAori SHimamurA. The word "BUNK-KA-KA-SH-A" thus deduced was considered to be too complicated and was condensed into the word "BUNKASHA", considered to be more likely to be remembered by visitors to the site. As the Complainant rightly points out, that explanation cannot be taken seriously. Had the Respondent really tried to build a domain name by using random letters from the names of the two pornographic actresses, in order to pay a tribute to these actresses, it would no doubt have arrived at some other abbreviation, being closer to the actresses� names and more likely to be associated with these names. Particularly it makes no sense to take from the name "Shimamura" the first two letters "SH" and the very last letter "A", instead of using the first three letters "SHI." Quite apparently the last letter A was referred to in the Response since otherwise it could not have been explained how the Respondent arrived at a domain name that is identical with the domain name of the Complainant and with the transliteration of the Complainant�s mark. Taking the two facts together that the "" website contains pornographic pictures and films mainly featuring Japanese models and that the domain name is identical to the transliteration of the Complainant�s mark that the Complainant uses for its e-commerce business, the Panelist is satisfied that the Respondent intentionally chose that domain name. This is all the more likely as the Panelist cannot believe that the Respondent was not aware of a Japanese Publishing House that edits amongst other publications the Penthouse magazine and offers in its e-mail commerce photo collections of scarcely dressed young girls. The Respondent itself refers to these photo collections as evidence for the Complainant being involved in the adult business in the same manner as the Respondent and draws from this submission the conclusion that the parties are competitors in the adult industry. When the Respondent goes on to accuse the Complainant that the Complainant intends to remove a competitor for its adult site, the Respondent overlooks in that context that the Complainant had rights in its mark "Bunkasha" when the domain name was registered and that the respective businesses cannot really be compared (since the Respondent�s photo collections do not belong to the category of pornography, whereas the Respondent is offering hard-core pornographic material). As explained in paragraph 6.1 above the Complainant faces in that context the problem that visitors to the "" site may believe that the Complainant has extended its activities into pornography.
As also explained in paragraph 6.1, the only way to use the Complainant�s mark on the Internet until Spring 2001, was to rely on its transliteration into Latin characters. Since the Panelist is convinced that the Respondent intentionally chose that transliteration as the domain name, he cannot consider the Respondent�s offering of goods and services under that mark to be bona fide.
This conclusion is supported by the fact evidenced by the Complainant that the Respondent used at its "" site amongst other (pornographic) contents photo-collections which it had electronically scanned from the Complainant�s website, some of which were even labeled with the Complainant�s registered or pending (as concerns transliterations) marks, offering these photo collections for sale.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name .
3) Registration and Use in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
As explained before, the Panelist is satisfied that the Respondent was fully aware of the Complainant�s existence and its trade name and mark "Bunkasha", when registering the domain name and that its explanations for the choice of this domain name cannot be accepted. Considering the use made of the domain name by the Respondent, the Panelist agrees with the Complainant that by using that domain name, it has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the website and of products on that website. Several factors support this conclusion: The website dominantly contains pornographic material featuring Japanese models. As already mentioned, the Respondent�s website contains photo-collections that are electronically scanned from the Complainant�s website and that partially show the Complainant�s mark. Also the site gives visitors the possibility to change from English to the Japanese language, where the text is written in Japanese characters. The Respondent admits that at least close to 7% of its visitors originate from Japan and generally these Japanese visitors will be aware of the Complainant. Even if the percentage may be small (there is however no evidence for the submission that only such a relatively small percentage of the visitors come from Japan), the absolute figure of such hits from Japanese visitors is quite high and can be considered to be an interesting business for the Respondent. The percentage of the subscribers to the Respondent�s network that is interlinked with the "" site may be much higher. Some Japanese visitors may particularly be attracted by the Respondent�s advertising that its websites contain material that is forbidden in Japan. However, visitors from other countries, where Latin script is used, may also be misled to the Respondent�s website, since the Complainant offers its products to clients outside Japan under its domain name and visitors intending to access that site may well simply type "" and thus arrive at the Respondent�s website. In conclusion the Panelist is satisfied that the Respondent fulfils the circumstances listed in paragraph 4b(iv) of the Policy.
This alone could be considered to be sufficient under the Policy for the Complainant to succeed. However, the Respondent�s offer to sell the domain name for 1 Million US$ and to sell a further domain name for 200,000 US$ further supports the finding that the Respondent has registered and is using the domain name in bad faith (even more so as the offer was accompanied by a statement that there would not be much room for negotiations). These amounts are of course clearly in excess of the Respondent�s out of pocket expenses. As concerns the domain name the exorbitant amount requested cannot be justified with the investment made by the Respondent. It has no doubt invested considerable sums into its website, and it has submitted some evidence for the costs involved, which are however far less than the requested amount. Furthermore, much of the contents of the website could continue to be used within the website network of the Respondent and the related group of Tokyo Network; only certain adaptations of these websites would be necessary, no doubt requiring an investment of far less than 1 million US$. The amount of 200,000 US$, requested for the domain name would still have been high, but much more realistic if it had been requested, as a negotiating base, for both domain names and together. Actually, the domain name also leads to the �B Network�. The costs involved in the establishment of that additional website, that contains the same links as other websites of the Respondent and of the Tokyo Girl Network is therefore minimal in comparison with the amount of 200,000 US$ requested for alone.
Even if the Respondent may not have acquired the domain name primarily for the purpose of selling it for valuable consideration in excess of its out of pocket costs (in view of the longstanding use of the domain name by the Respondent for its adult business the corresponding submission of the Complainant cannot be taken as proven), its offer to sell the domain name for such an excessive amount is an additional sign of bad faith (the circumstances listed in the Policy are not exhaustive). Also the fact that the Respondent offered to sell the domain name , registered in the name of Orient Entertainment Corporation, for US$ 200,000 is an additional sign of bad faith. The Respondent argues that it offered to sell the domain names and in conjunction as there would be no purpose in retaining the "defensive" registration of once it had sold the domain name to the Complainant. This argument is already strange when considering that the domain name does not belong to the Respondent and is being used. Furthermore, had the Complainant entered into the proposed deal and accepted to buy the domain name from the Respondent, it would practically have been forced to also buy the domain name from its owner. Otherwise the Respondent, specifically Orient Entertainment Corporation, the company in Brisbane, Australia, quite apparently linked with the Respondent, could simply have continued its present use of that domain name that also leads to the �Bunkasha Network�.
In conclusion the Panelist is satisfied that the Respondent has registered and is using the domain name in bad faith.
7. Decision
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name be transferred to the Complainant.
Dr. Gerd F. Kunze
Sole Panelist
Dated: October 14, 2002
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