WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Shogakukan-Shueisha Productions Co., Ltd. v. N.T.Technology Inc. Case No. D2008-1497 1. The Parties
Complainant is Shogakukan-Shueisha Productions Co., Ltd., Tokyo, Japan, represented internally.
Respondent is N.T.Technology Inc., Carson City, Nevada, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2008. On October 3, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On October 6, 2008, Tucows transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 6, 2008.
The Center appointed Haig Oghigian as the sole panelist in this matter on November 20, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The following information is asserted as fact in the Complaint.
Complainant is a Japanese corporation established in 1967 for the management and sales of commercialization rights of “Topo Gigio” solely in Japan. Since then, it has grown into one of the most successful company in Japan for many animation characters, represented by Doraemon.
Doraemon is a Japanese comic book series created by Mr. Fujiko F. Fujio (the pen name of Mr. Hiroshi Fujimoto) which later became an animation series. Publication started in 1970 in Shogakukan's learning magazine. It is a famous character not only in Japan but worldwide.
Complainant is the owner of many registered trademarks DRAEMON worldwide (“Marks”), including a US Federal trademark No. 76380125 (registered on January 28, 2003 for classes 14, 16, 20 and 30). 5. Parties' Contentions A. Complainant
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In relation to the element in paragraph 4(a)(i) of the Policy, Complainant asserts that the domain name in dispute is completely identical to its trademarks registered not only in Japan but also world-wide.
In relation to paragraph 4(a)(ii) of the Policy, Complainant contends that Respondent is not a licensee of Complainant for the use of the Marks, the domain and the contents of any other official website regarding DORAEMON. Respondent's name “N.T. Technology Inc.” has nothing to do with DORAEMON. Respondent is operating a pornographic website using the domain name in question. Therefore, Respondent does not need the domain as it has no rights to deal with DORAEMON and any other related goods and services. As Respondent is operating a pornographic site, it has made no use of the disputed domain name in connection with any bona fide offering of goods or services in any commerce.
In relation paragraph 4(a)(iii) of the Policy, Complainant contends that people attempting to access the website through the disputed domain name are likely to believe it to be a site affiliated with DORAEMON due in significant part of the widespread fame of the Marks. As a result, the disputed domain name is misleading those who are attempting to access DORAEMON's website but who are instead directed to Respondent's pornographic website. As such, Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent's pornographic website. Further, as DORAEMON is very popular among children and young people, children who like DORAEMON may possibly access the pornographic website. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove that each of the following three elements are present if the Complaint is to prevail:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Respondent has registered the disputed domain name . This name is identical to Complainant's Marks DORAEMON.
The Panel is therefore satisfied that the disputed domain name is identical to Complainant's Marks and Complainant has proven paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has established a prime facia case that Respondent lacks rights or legitimate interests in the disputed domain name. There is no indication in the Complaint that Respondent is known under the disputed domain name and Respondent did not respond to the Complaint.
The Panel is therefore of the opinion that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
It has been clearly pointed out in National Association of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL,WIPO Case No. D2001-1387 that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”.
In addition, it is commonly understood, from previous UDRP cases decided by WIPO panels, that whatever the motivation of Respondent, the diversion of the disputed domain name to pornographic site using a third party's trademark is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith. See Caledonia Motor Group Limited v. Amizon,WIPO Case No. D2001-0860, and Bass Hotels & Resorts, Inc. v. Mike Rodgerall,WIPO Case No. D2000-0568.
In accordance with previous UDRP panel decisions, the Panel finds that Complainant has established on the balance of probabilities bad faith as required by paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules the Panel orders that the domain name be transferred to Complainant.
Haig Oghigian
Sole Panelist
Dated: December 4, 2008
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