The Complainant is Bandai Co., Ltd. of Tokyo, Japan, represented by Melbourne IT Digital Brand Services, Australia.
The Respondent is Hu Yanlin of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2012. On October 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2012. The Response was filed with the Center on October 23, 2012.
On October 24, 2012, the Complainant filed a Supplemental Filing in reply to the Response.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 14, 2012. 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 Complainant, founded in Japan in 1950, manufactures and sells toys, games, and digital entertainment products, many of which are associated with anime and graphic books, and is responsible for approximately USD 6 billion in net sales throughout the world. The Complainant owns a number of trademarks, trade names, related logos and design marks, registered throughout the world, that identify its goods and services. The earliest registration of the Complainant’s word mark BANDAI is January 30, 1979 in Japan. The Complainant registered the BANDAI trademark in China where the Respondent is located on April 30, 1982. The Complainant has also registered a number of domain names (e.g., , ), and registered on January 9, 2009.
The Respondent is based in China. The Respondent registered on October 7, 2009. The website linked to , “www.”, is a landing page provided by SEDO, which publishes advertising links on the website auto-associated with . 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its BANDAI mark because (1) the “Bandai” portion of is identical to the BANDAI mark, (2) the BANDAI mark is well known throughout the world, including China, and (3) the addition of “p” and the hyphen in are insufficient to be considered a material alteration of the Complainant’s mark.
The Complainant alleges that the Respondent has no rights or legitimate interests with respect to because (1) the Respondent registered a trademark or trade name corresponding to the , (2) the Respondent has not used in a way that would confer legitimate interests or rights in , (3) the Complainant has not licensed or authorized Respondent’s use of its mark, (4) the website the Respondent is using “www.” to offer a pay-per-click site featuring competing products, and (5) the Respondent is not engaged in any legitimate noncommercial or fair use of .
The Complainant alleges that the Respondent originally registered and is currently using in bad faith because (1) the Complainant registered the BANDAI mark much earlier than the Respondent registered , (2) the Complainant’s BANDAI mark was well known at the time was registered, (3) the Complainant registered approximately 9 months prior to the Respondent registering , (3) it is unlikely that the Respondent was not aware of the Complainant and Complainant’s BANDAI mark when the Respondent registered , (4) “www.” displays pay-per-click commercial hypertext links that refer to other companies, including competitors, (5) the Respondent is using the Complainant’s BANDAI mark to attract traffic to the site for the Respondent’s benefit, (6) the Respondent intentionally attracts, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant and the Complainant’s BANDAI mark, and (7) the Respondent has offered for sale for 3,000 USD, thereby unfairly capitalizing on the Complainant’s brand, B. Respondent
The Respondent alleges that the disputed domain name is not confusingly similar to the BANDAI mark because the Complainant does not have a trademark on “p-bandai” in China and other countries.
The Respondent alleges that the Respondent has rights or legitimate interests with respect to because the Bandai portion of can be transliterated to “a wide belt” or “apply for a loan” in Chinese, which makes a generic domain name.
The Respondent alleges that it did not register and is not currently using in bad faith because (1) the Respondent is not interested in Japanese culture and was not aware of Complainant when registering , (2) it is a generic domain name, (3) 3,000 USD is a fair sale price, (4) the pay-per-click advertisements do not always resolve to competitors or products of the Complainant, (5) “www.” includes a disclaimer from SEDO (the landing page generator) that disclaims any implication of association, endorsement, or recommendation based on the links or references on the page, (6) there are few visitors to “www.”, and (7) an offer to sell a domain name is not, by itself, an illegitimate use. 6. Discussion and Findings A. Supplemental Filings
As stated in Lloyds TSB Bank PLC v. Daniel Carmel-Brown,WIPO Case No. D2008-1889:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. The principles adopted and confirmed in these decisions are that 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; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.” See also, Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited,WIPO Case No. D2010-0776.
Here, the Complainant has submitted a Supplemental Filing to address statements made in the Response that reasonably could have been addressed in the Complaint. Furthermore, the Panel finds that the Complainant has not provided statements or evidence indicating an exceptional circumstance that limited the reasonable scope of its primary submission. The Panel cannot justify potentially compromising procedural economy or prejudicing the Respondent by considering the Supplemental Filing. Thus, the Panel declines to enter or consider the Complainant’s Supplemental Filing as per paragraphs 10 and 12 of the Rules. B. Identical or Confusingly Similar
The record shows the Complainant owns trademark rights in BANDAI recognized in Japan, China, and elsewhere prior to the registration of the disputed domain name in 2009. The record also shows that the Complainant’s mark is well known throughout the world and in China, and was similarly well known in 2009.
The disputed domain name combines the literal element consisting of the Complainant’s BANDAI trademark with a hyphen and the letter “p”. The Panel views the “bandai” portion of the disputed domain name as identical to the Complainant’s BANDAI trademark, and so the disputed domain name features the Complainant’s trademark in its entirety.
“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence.” See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668.
The mere addition of a hyphen and a letter “p” to the Complainant’s BANDAI trademark is not normally sufficient to overcome a finding of confusing similarity. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323. “Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.” Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227.
Here, the disputed domain name incorporates the entirety of the Complainant’s trademark, and the additional hyphen and letter do not reduce the prominence of the Complainant’s trademark therein. Rather, the additional terms increases the likelihood of confusion because it mirrors another domain name of the Complainant’s registered prior to the dispute domain name. Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809. Furthermore, the Panel does not believe that the inclusion of the terms to the Complainant’s BANDAI trademark creates a new or different mark or literal element which is materially different from the Complainant’s trademark. It is therefore likely that consumers would be confused by the use of the trademark in the disputed domain name.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s BANDAI trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the word “bandai”, regardless of whether it is has a generic transliteration in Chinese for “wide belt” or “apply for a loan”. The Panel notes that the links on the website at the disputed domain name are not related to these generic terms. Furthermore, the Chinese Trademark Office has granted a trademark in the word BANDAI that predates the Respondent’s registration of the supposedly generic domain name. As such, the Complainant has successfully presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. Discussed more fully below, the Panel also finds the Respondent is not engaged in a bona fide offering of goods and services. Finally, there is no evidence in the record to indicate that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
The record shows the Complainant owns trademark rights in BANDAI that precede registration of the disputed domain name. The disputed domain name is predominantly composed of the trademark and incorporates the trademark in its entirety. A simple Internet search for “bandai” results in links predominantly related to the Complainant and its websites, and it is likely, given the notoriety of the Complainant’s business, that this was also true at the time the disputed domain name was registered. Furthermore, the prior registration by the Complainant of a very similar domain name should have, and likely did, put the Respondent on notice of the Complainant and Complainant’s mark.The Panel finds that the Respondent was likely aware of the Complainant or at least should have known of the Complainant when registering the disputed domain name.
The record also shows that the website linked to the disputed domain name features pay-per-click advertising links that often show products that may compete with the Complainant’s products (such as “toy story” or “big dolls”).
The use of a domain name featuring a trademark to advertise goods or services which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. Moreover, by registering a domain name using the Complainant’s BANDAI trademark and advertising goods in competition with the Complainant, the Respondent is intentionally diverting traffic from the Complainant’s business and websites, even if only minutely.
Paragraph 4(b)(i) of the Policy states that where there are circumstances indicating that a registrant has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; such use constitutes evidence of bad faith registration and use.
The record shows that the Respondent has used the disputed domain name to provide advertisements in direct commercial competition with the Complainant and the Complainant’s products. Moreover, the incorporation of the Complainant’s trademark into the disputed domain name combined with the content featured on the linked website, illustrates an intent on the part of the Respondent to extract valuable consideration in excess of reasonable out of pocket costs from the Complainant or a competitor to the Complainant.
The Respondent argues that the term “bandai” has generic transliteral meaning in Chinese, but Respondent fails to offer a reason to add a “p” and a hyphen to the term “bandai” in the context of the generic meaning of the term. The Respondent also argues that the SEDO landing page includes appropriate disclaimer language, but the language the Respondent quotes disclaims trademarks in the advertising links presented on the webpage, not trademarks featured in the domain name.
The Panel concludes, in light of all of the above, that the Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: November 28, 2012
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