The Complainant is SEGA Games Co., Ltd. of Tokyo, Japan, represented by Smart & Biggar, Canada.
The Respondent is Amman Sabet of Philadelphia, Pennsylvania, United States of America (“United States”), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Go France Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2016, the Respondent submitted an email requesting a copy of the Complaint on file. On October 10, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2016. The Response was filed with the Center on November 3, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 21, 2016. 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 submitted a supplemental filing on November 21, 2016.
The Panel did not request supplemental filings in this proceeding and, having considered the overall circumstances of the case, the Panel declines to consider the Complainant’s supplemental filing. 4. Factual Background
The Complainant is a company headquartered in Japan with divisions in North America and Europe. It is a developer and publisher of video games. It is the owner of numerous trademark registrations which comprise or include the mark SEGA, including United States trademark number 2207358 for SEGA registered on December 1, 1998 for video game machines and related goods in Class 28.
The Respondent registered the disputed domain name on September 28, 2016. The Respondent exhibits evidence that he has used the disputed domain name for the purposes of a website holding page headed “The Sega Games Site”, which states that an unofficial fan site, relating to old Sega games and game systems, is under construction. 5. Parties’ Contentions A. Complainant
The Complainant states that it has supplied video game consoles and software since 1983 and is a prominent multinational company with a formidable Internet presence. It submits evidence of its history and reputation under the name and mark SEGA and under a related figurative trademark.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It states that the disputed domain name is identical to, and incorporates the entirety of, its trademark SEGA together with the addition of the generic Top-Level Domain (“gTLD”) “.games”. The Complainant submits that, while the gTLD is typically to be disregarded in assessing confusing similarity, in this case it serves only to increase the likelihood of confusion owing to the Complainant’s association with video games.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant lists the criteria set out under paragraph 4(c) of the Policy by which the Respondent may demonstrate rights or legitimate interests in respect of the disputed domain name, but submits that none of those criteria are present in this case.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant submits that the term SEGA can only have been intended to refer to the Complainant’s trademark as it has no other meaning. The Complainant contends that, while the disputed domain name is being passively held, this does not prevent a finding of bad faith in circumstances where the registrant has a view to taking unfair advantage of the trademark rights of another (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent does not deny the similarity between the disputed domain name and the Complainant’s trademark. He submits, however, that there are many other domain names in use that include the mark SEGA which are not owned or operated by the Complainant. He exhibits evidence by way of screenshots of websites linked to , , and , all of which appear to be fan sites.
The Respondent states that he registered the disputed domain name only after the relevant “sunrise” period for the “.games” gTLD had expired and the Complainant had failed to register the name. He provides evidence of having obtained the disputed domain name by means of a “GoDaddy Auction” and submits that his acquisition of the disputed domain name by this method gives rise to his rights or legitimate interests in the disputed domain name.
The Respondent states that he intended to use to disputed domain name for the purpose of a fan site in which he would share his own experiences of the Complainant’s games that were meaningful to him, particularly in the 1980s and 1990s. He refers to the evidence of other such similar websites, and adds that he intended to make clear on his website that he was fan and was not connected with the Complainant.
The Respondent submits that the intended use to which he refers would constitute legitimate noncommercial or fair use of the disputed domain name because his website would constitute commentary.
The Respondent denies having registered the disputed domain name for profit or with any intention of preventing the Complainant from registering that name. He states that anyone visiting his intended website would see that it was not the Complainant and denies having acted in bad faith. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of longstanding registered trademark rights for the mark SEGA. The Panel also finds that the Complainant’s mark is widely known throughout the world in connection with video games. The disputed domain name is , which is identical to the Complainant’s trademark if the gTLD “.games” is ignored. While the gTLD is conventionally to be disregarded for the purposes of assessing confusing similarity, jurisprudence under the UDRP has more recently recognized that in the case of the newer, more descriptive, gTLDs it may in certain cases be of greater relevance. In this case, the Panel finds that the gTLD “.games” adds to the confusion between the disputed domain name and the Complainant’s trademark, to which it is already identical.
In the circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Whether or not the Complainant failed to register the disputed domain name during the relevant “sunrise” period, the mere registration of the disputed domain name by the Respondent (by whatever method) does not vest him with rights or legitimate interests in respect of the disputed domain name. The issue in this case, therefore, is whether the Respondent’s alleged intended use of the disputed domain name for the purpose of a fan site is sufficient to give rise to such rights or legitimate interests.
While the Respondent has not provided evidence of his preparations for the fan site to which he has referred, e.g. any mock-up of the content, the Panel is nevertheless prepared to proceed on the basis that that the Respondent’s intentions were as he has stated. The Panel also accepts that there are other such websites in existence and that these sites are linked to domain names which include the mark SEGA.
However, in this particular case the Panel finds that the disputed domain name being identical to the Complainant’s mark is by its nature inherently misleading and will inevitably represent to a significant number Internet users that it is owned, operated or approved by the Complainant. It is, in other words, an impersonation of the Complainant. In the view of the Panel, even if such a domain name resolves to a genuine fan site, and it is made clear on that site that it is not connected with the Complainant, unfair advantage has still been taken of the Complainant’s trademark by attracting Internet users to the website on the basis of a misrepresentation (see, e.g. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698).
While the Panel acknowledges the other domain names and websites to which the Respondent has referred, the Panel has not heard argument from the Complainant concerning those examples and, in any event, the Panel is concerned only with the present case. In this case, for the reasons stated above, the Panel finds that the Respondent’s alleged intended use of the disputed domain name does not give rise to rights or legitimate interests in the disputed domain name.
The Panel finds in the circumstances that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Similar considerations apply to the issue of bad faith. In the view of the Panel, the disputed domain name, , will inevitably misrepresent to a significant number of Internet users that it is owned, operated or approved by the Complainant and it is therefore an inherently misleading name. The Panel finds that the use of that name to attract Internet users to the Respondent’s website will therefore take unfair advantage of the Complainant’s goodwill in its trademark, regardless of the fact that the intended website may be a genuine fan or tribute site and regardless of any disclaimer to be found on the website itself.
The fact that the Respondent has not yet put his plans into effect, and has maintained only a holding page, does not affect the conclusions of the Panel (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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.
Steven A. Maier
Sole Panelist
Date: November 24, 2016
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