The Complainant is FC2, Inc., United States of America (“United States”), represented by DSA Legal Solutions, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / David Chan, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 26, 2019.
The Center verified that the Complaint together with the amended 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 August 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2019. The Center received informal email communications from the Respondent on July 29, 30, and 31, 2019.
The Center appointed John Swinson as the sole panelist in this matter on September 12, 2019. 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 is FC2, Inc., a company incorporated in the United States. The Complainant is a hosting provider, and provides various services, including providing space for users to upload video content so that users can generate a profit. The Complainant has been operating since 1999.
The Complainant is the owner of several registered trade marks for FC2, including Japanese registered trade mark number 4964857, which was registered on June 30, 2006, and assigned to the Complainant on April 20, 2015 (“the Trade Mark”) and United States registered trade mark number 5046126, registered on September 20, 2016 (“the US Trade Mark”). The Complainant is also the owner of United States registered trade mark number 5046147 for , registered on September 20, 2016 (“the Logo Mark”).
The Complainant is also the owner of a domain name incorporating the Trade Mark, being , registered on May 20, 1999.
The Respondent is David Chan, an individual of Canada. No formal response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on January 14, 2013. At present, the Disputed Domain Name resolves to an adult website with pornographic images and links to purchase the images and/or videos. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or confusingly similar
The Disputed Domain Name includes the Trade Mark and the word “free” before the Trade Mark. The Disputed Domain Name is identical or confusingly similar to the Trade Mark. The Complainant registered the Trade Mark before the Disputed Domain Name was registered.
The Disputed Domain Name also resolves to a website which includes the Logo Mark, which misleads users to recognise websites provided by the Complainant for free.
No rights or legitimate interests
The Respondent registered the Disputed Domain Name on January 14, 2013. This is long after the Complainant registered the Trade Mark with the Japan Patent Office and long after the Complainant began using the Trade Mark. The Complainant started its business as a hosting provider in the United States in 1999.
The term “fc2” is arbitrary and has no meaning outside of identifying the Complainant as a source of certain products and services. The Respondent is not a licensee of the Complainant or otherwise authorised to use the Trade Mark for any purpose. The Respondent is not commonly known as the Disputed Domain Name. The Respondent has not established rights or legitimate interests in the Disputed Domain Name.
The Trade Mark is used on the website at the Disputed Domain Name. This deceives Internet users to misbelieve that the Disputed Domain Name is related to the Complainant.
The website at the Disputed Domain Name consists of:
- a list of videos which are uploaded by the Complainant’s users to the Complainant’s website;
- the words “FREE FC2 CONTENT”;
- the words “IMPORTANT ANNOUNCEMENT” and “this site introduces more than 1000 popular videos provided by Fc2”.
The Complainant’s users pay to upload these videos and other users purchase and download them. The website at the Disputed Domain Name provides these paid videos for a charge to Internet users. When a user clicks on the title of a video, the website resolves to a payment website. This serves the purpose of generating revenue and destroys the good reputation of the Complainant among its users and reduces the Complainant’s revenues. It harms the Complainant’s reputation because its users are misled into believing that they do not have to purchase videos and content on the Complainant’s website by going to the Disputed Domain Name. The Respondent is using the Disputed Domain Name to introduce videos which are uploaded on the Complainant’s website and mislead users to purchase them through the Respondent’s website. This is not a bona fide offering of goods or services or a legitimate or fair use.
Registered and used in bad faith
The Respondent is using the Disputed Domain Name to mislead Internet users to think the website at the Disputed Domain Name is owned and operated by the Complainant. The Trade Mark and the Logo Mark are both used on the website at the Disputed Domain Name. This has not been authorised by the Complainant. The Respondent presumably receives click-through fees. On January 30, 2013, the website at the Disputed Domain Name included a warning that “this website includes contents and videos which are not authorised by the Complainant”.
The Respondent is using the Disputed Domain Name to profit from and exploit the Trade Mark. The Respondent is using the Disputed Domain Name in connection with a revenue-generating scheme pursuant to which the Respondent receives revenue generated by users purchasing videos through the website.
The very nature of the Respondent’s registration evidences bad faith. The Respondent knowingly registered the Disputed Domain Name containing the exact reproduction of the well-known Trade Mark and to capitalise on consumer recognition of the Trade Mark. The Trade Mark is unique and arbitrary such that it is unlikely the Respondent devised the term “freefc2” on its own. B. Respondent
The Respondent makes the following submissions in an informal response.
The Respondent does not know why the Complainant wants the Disputed Domain Name. The Disputed Domain Name is based on “free from [C]anada”. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a formal Response. A. Procedural Issues – Informal Response
On July 29, 30, and 31, 2019, the Respondent sent informal email communications to the Center. In the communications on July 30 and 31, 2019, the Respondent queried how it could request a suspension for settlement discussions. In the communication on July 29, 2019, the Respondent stated “i am not idea why fc2 want to get my domain. the domain name is base on free from canada. i can sell them if they want , however i dont want lose the domain without a reason”.
This does not constitute a formal Response and was before the Respondent had been formally notified of the Complaint. It does not fully address the elements of the Policy or contain the required certification (see paragraph 5 of the Rules). Despite this, the Panel has taken this submission into account in making its decision, although notes that it has not impacted the Panel’s decision.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the word “free”. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element (see section 1.8 of WIPO Overview 3.0). In this case, the term “free” does not dispel such similarity.
The Panel notes that there are discrepancies in the evidence provided by the Complainant and contentions made by the Complainant as to when it acquired its registered rights. These are discussed in more detail below. Even if the Disputed Domain Name was registered before the Complainant acquired trade mark rights, this does not preclude a finding of identity or confusing similarity (see section 1.1.3 of WIPO Overview 3.0).
The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Panel accepts the Complainant’s submission that the Respondent is not a licensee or otherwise authorised by the Complainant to use the Disputed Domain Name.
- There is no evidence that the Respondent is commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- As discussed below, the Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers. The Disputed Domain Name resolves to a website that offers pornographic/adult videos for sale, and therefore presumably generates revenue. This is not supportive of a claim to rights or legitimate interests (see section 2.5.3 of WIPO Overview 3.0).
The Respondent argues that he chose the Disputed Domain Names because it is based on “free from Canada” (i.e., free “fc”). The Panel acknowledges that holding domain names consisting of acronyms, dictionary words, or common phrases can be bona fide and not per se illegitimate under the UDRP (see section 2.1 of WIPO Overview 3.0). However, the Panel considers that the Respondent’s explanation is not credible and also does not explain the use of the number “2” in the Disputed Domain Name.
Even if the Panel was to accept that the Respondent registered the Disputed Domain Name because it corresponded to “free from Canada”, this does not by itself automatically confer rights or legitimate interests on the Respondent. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights. Similarly, in order to find rights or legitimate interests in domain names comprising of an acronym, the respondent is required to provide evidence supporting its explanation for its registration and use of the domain name which should indicate a credible and legitimate intent which does not capitalise on the reputation and goodwill inherent in a trade mark (see section 2.10 of WIPO Overview 3.0).
According to the Complainant, the videos on the website at the Disputed Domain Name are copied from the Complainant’s website. The Respondent’s website prominently displays the Trade Mark and the Logo Mark. The website also indicates that the video content (from the Complainant) is free, but a user of the website is then directed to a payment page when it clicks on a video link. The Panel finds that the Disputed Domain Name is being used to trade off the Complainant’s rights and capitalise on the Complainant’s reputation. This is not a bona fide offering of goods or services.
As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
According to the Complainant, the Trade Mark was registered and assigned by the former owner to the Complainant in 2004. The assignment deed provided by the Complainant indicates that the Trade Mark was assigned to the Complainant on or around April 20, 2015. Despite this, the Trade Mark was filed on September 29, 2005, and registered on June 30, 2006. According to the terms of the assignment deed, the original trade mark owner was acting as the Complainant’s agent in registering the Trade Mark. Therefore, the Panel finds that the Complainant has had trade mark rights since at least 2005.
Further, the Complainant has been trading since 1999 and has owned (and presumably been operating) a domain name incorporating the Trade Mark, being , since 1999. According to this Panel’s limited research, the Complainant’s video hosting service is well-known in Japan. The Disputed Domain Name was registered over 10 years after the Complainant first used the FC2 mark in relation to its services. Given that the website at the Disputed Domain Name prominently displays both the Trade Mark and the Logo Mark, and allegedly copies content from the Complainant’s website for commercial gain (by advertising that the content is free, but then including links for users to purchase the content), it is open to the Panel to find that the Disputed Domain Name was registered in bad faith. The Respondent’s use of a privacy service is also evidence of bad faith (see section 3.6 of WIPO Overview 3.0).
Given this use, the Panel finds that the Respondent registered and is using the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of his website, location, or of a product or service on his website or location. The Respondent is using the Trade Mark in the Disputed Domain Name to trade off the Complainant’s reputation, and to misleadingly divert Internet users to his own website.
This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Complainant succeeds on the third element 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.
John Swinson
Sole Panelist
Date: September 25, 2019
Full & Egal Universal Law Academy