WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Square Enix Ltd. v. Wizards Productions, Sohaib Thiab Case No. D2010-0634 1. The Parties
The Complainant is Square Enix Ltd. of London, United Kingdom of Great Britain and Northern Ireland, represented by Reynolds Porter Chamberlain LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Wizards Productions of Amman, Jordan, represented by Nabulsi & Associates, Jordan. 2. The Domain Name and Registrar
The disputed domain name is registered with Spot Domain LLC dba D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2010. On April 22 and 23, 2010, the Center transmitted by email to Spot Domain LLC dba D. a request for registrar verification in connection with the disputed domain name. On April 24, 2010, Spot Domain LLC dba D transmitted by email to the Center its verification response, providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 28, 2010. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on April 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2010. The Response was filed with the Center on May 10, 2010.
The Center appointed Dennis A. Foster as the sole panelist in this matter on May 27, 2010. 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.
The Complainant filed a Supplement to the Complaint on May 13, 2010. The Policy and the Rules do not permit explicitly the filing of additional materials by the Complainant, and previous UDRP panels have ruled that such materials should be considered only in exceptional cases. See, for example, Lloyds TSB Bank PLC v. Daniel Carmel-Brown,WIPO Case No. D2008-1889 (“…additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission…”); and A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517. In this case, the Panel discerns no exceptional circumstances that would merit the consideration of said Supplement, and thus shall not consider it in drafting the decision below. 4. Factual Background
The Complainant is a company located in the United Kingdom that produces and markets computer games and related merchandise worldwide. It holds both Community Trade Mark (“CTM”) and United Kingdom Intellectual Property Office (“UKIPO”) registrations for its trademark, HITMAN (i.e., Registration No. 00130584, issued September 10, 1999; and Registration No. 2208432, issued September 13, 1999).
The Respondent owns the disputed domain name and registered it on January 2, 2008. The Respondent operates a website at the disputed domain name that offers internet users the opportunity to play a computer game for free. Respondent collects advertising revenue from said website and, at least for a time, displayed the images of characters there that closely resembled character images used by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant produces and markets computer games and related merchandise on a worldwide basis under the brand name “Hitman”. The Complainant has generated substantial goodwill and a favorable reputation in association with its products through extensive investment and promotion.
The Complainant began production of the “Hitman Series” in November 2000, and by 2007 those products had garnered sales of 8.9 million units. Sales revenue from 2002 through 2006 amounted to over GBP109 Million, with related marketing costs exceeding USD12 Million. Moreover, both a novel and a feature film based on said series have been created and distributed on an international basis.
The Complainant owns several Community Trade Mark and United Kingdom registrations with respect to its primary trademark, HITMAN. Among domain names owned by the Complainant in relation to its HITMAN products is .
The disputed domain name, , is confusingly similar to the Complainant's mark, HITMAN. The addition of the word “life” does not mitigate effectively such similarity.
The Respondent is in no way affiliated with the Complainant, and the Complainant has not granted the Respondent the right to use any of the Complainant's marks. Thus, the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not used the disputed domain name in connection with a bona fide offering of services or goods. The website found at that name makes available computer games that involve character images that are the same as the character images found in the Complainant's Hitman Series. The Respondent is attempting to trade off the reputation and goodwill associated with the Complainant's products.
The use of the disputed domain name as described above is neither noncommercial nor fair use of that name. Moreover, there is no indication that the Respondent has ever been commonly known as the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith. The Respondent's response to several letters sent by the Complainant requesting that Respondent discontinue use of the domain name was to claim to have removed the infringing images, but to assert the Respondent's right to continue website operations at the disputed domain name. Upon later inspection, the Complainant found that the Respondent had not removed the character images that are the same as those found at the Complainant's websites.
The Respondent's intent is to attract Internet users to its website through confusion with the Complainant's trademark. B. Respondent
The website found at the disputed domain name has a disclaimer that disassociates it from the Complainant's websites. Moreover, after having received a complaint from the Complainant, the Respondent removed any images that may have been similar to the character images found among the Complainant's products.
The disputed domain name is neither identical nor confusingly similar to the Complainant's trademarks, because of the addition of the letters “slife”. Any reasonable person should be able to detect the difference, and be able to differentiate the games offered through the disputed domain name from those offered by the Complainant.
The Respondent has a legitimate right to the disputed domain name because the Respondent paid all the required fees to acquire that domain name.
The Respondent is not using the disputed domain name in bad faith. The Respondent did not register the disputed domain name with the intent to sell it to the Complainant or any of its competitors. Instead, the Respondent offers Internet users a free computer game to play, and receives revenues solely from the advertisements placed on its website. Moreover, the Respondent did not attempt to restrict the Complainant from using a domain name to reflect its trademark or attempt to attract Internet users through confusion as the source or sponsorship of the disputed domain name.
The Respondent's good faith is evidenced clearly through the use of a “fine print and clear” disclaimer to distinguish its offerings from those of the Complainant or anyone else. 6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) – (iii), the Complainant may prevail in this proceeding and the Panel may order a transfer of the disputed domain name, if the Complainant proves that:
- 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 disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
By virtue of its trademark registrations with the CTM and the UKIPO (Annex 5), the Complainant has established its rights in the mark HITMAN to the satisfaction of the Panel. See, Classmates Online, Inc. v. Maxim Snezko a/k/a Steve Cho,WIPO Case No. D2007-0825 (“The Panel further determines that Complainant has rights in the CLASSMATES marks. These rights are manifested in the U.S. and CTM registrations for the CLASSMATES marks…”); and The Royal Bank of Scotland Group plc v. Teddy Jackson, NAF Claim No. FA992134 (“Complainant has established rights in the RBS mark pursuant to Policy [paragraph] 4(a)(i) through registration of the mark with the UKIPO.”)
The Respondent contends that the disputed domain name, , is not identical, or even confusingly similar, to the Complainant's HITMAN trademark, because of the additional term “slife”. The Panel notes that that addition appears, even without the apostrophe before the “s”, to imply a possessive interest in the next part of the term, “life”, in relation to main domain name component “hitman”. As such, that addition offers little distinction from the trademark at issue. The Panel concludes that the disputed domain name and the Complainant's mark are confusingly similar. Numerous prior UDRP panels have ruled that the mere addition of a generic term or a few letters to a trademark does not negate a finding of confusing similarity for the purposes of a paragraph 4(a)(i) analysis. See, for example, Nokia Corporation v. Phonestop,WIPO Case No. D2001-1237 (“…numerous prior ICANN panels have recognized, the incorporation of a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark…The addition of other terms in the domain name in itself does not affect a finding that the domain names are identical or confusingly similar to the Complainant's registered trademark.”); and Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219 (“Respondent's addition of "-games" to its domain name, [], does nothing to reduce its confusing similarity with Nintendo's POKEMON® marks.”).
In line with the above, the Panel finds that the Complainant has succeeded in demonstrating that the disputed domain name is identical or confusingly similar to a trademark in with the Complainant has rights. B. Rights or Legitimate Interests
The consensus of prior UDRP panels is that a complainant must establish at least a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name before the burden of rebutting that proposition falls upon the respondent. See AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200 (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); and Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. In this case, by producing evidence of rights in a trademark corresponding closely to the disputed domain name, and by asserting unequivocally that no license to exploit those rights was granted to the Respondent, the Complainant has established clearly such a prima facie case.
The Respondent's rather weak rebuttal to said prima facie case is to assert its legitimate rights to the disputed domain name because all the proper fees have been paid. Obviously, if such an argument was valid, there would be no need for UDRP proceedings, because just about every respondent has paid requisite registration fees.
In searching for a more effective defense, the Panel has examined whether any of the three criteria cited in paragraph 4(c) of the Policy might avail the Respondent on this issue. The conclusion of the Panel is that none will. The criterion in paragraph 4(c)(iii) is inapplicable because the Respondent has admitted to collecting advertising fees through its use of the disputed domain name, thus failing to make noncommercial or fair use of the disputed domain name. Paragraph 4(c)(ii) fails to apply because there is no evidence that the Respondent, nominally “Wizards Productions” or “Sohaib Thiab”, has ever been commonly known as or any variation thereof.
With respect to Paragraph 4(c)(i), the Respondent agrees with the Complainant that the Respondent offers Internet users at the disputed domain name the opportunity to play a computer game that is similar to the offerings of the Complainant. This does not strike the Panel as a bona fide offering of goods or services, since it appears that the Respondent is trading on value created by the Complainant. This is especially true as the Respondent has also conceded that, at least initially, it displayed character images at its website that were identical to those employed by the Complainant. Such action is blatant infringement, not a bona fide offering. See, Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052 (“Respondent's use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is [not] a bona fide offering of goods or services…”); and Reed Elsevier Properties Inc. and Reed Elsevier Inc. v. Weekly Publishers, NAF Claim No. FA151536 (“Respondent's use of the domain name for a competing website does not constitute a bona fide offering of goods or services pursuant to Policy [paragraph] 4(c)(i)…”).
In sum, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four circumstances that can give rise to a finding of bad faith registration and use of a disputed domain name. Most pertinent in this case is the fourth circumstance as follows:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Although the Respondent offers Internet users free play of the game found at its website located at the disputed domain name, the Respondent also collects advertising revenue as the free play occurs. Thus, the Internet users are attracted to that website for the Respondent's commercial gain. As far as the Panel can discern, that attraction is generated primarily, if not solely, because of the similarity between the disputed domain name and the Complainant's mark and the likelihood of confusion as to affiliation or sponsorship due to that similarity. Such confusion, which the Panel believes is the intent of the Respondent, is especially likely because the game offered by the Respondent is within the same genre of games marketed by the Complainant and because the Respondent has employed character images that mirror the Complainant's character images. Thus, the Panel determines that the circumstance cited in Policy paragraph 4(b)(iv) applies to this case.
The Respondent argues that its use of a disclaimer, which disavows any connection between its website and the Complainant, should relieve the Respondent from any charges of bad faith. However, previous Policy panels have held consistently that such disclaimers do not prevent findings of bad faith registration and use of a disputed domain name, and the Panel is inclined to follow this precedent. See, World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642 (“The Respondent's choice of the Domain Name has thus created a likelihood of confusion between the Domain Name and the Complainant's mark…Confusion of that kind cannot be “cured” by posting a “fine print” disclaimer on the Respondent's website.”); and Caterpillar Inc. v. Ron Feimer, NAF Claim No. FA1008998 (finding the Respondent made a bad faith registration and use of the domain name in question and stating, “The fact that Respondent has now added a more prominent disclaimer on its site is also irrelevant.”).
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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 the Complainant.
Dennis A. Foster
Sole Panelist
Dated: June 10, 2010
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