The Complainants are Square Enix Holdings Co. Ltd. and Square Enix Group, Japan, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States” or “U.S.”).
The Respondent is Alexander McSwain, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2020. On October 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on October 20, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on October 22, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. The Respondent filed an informal response on October 29, 2020. The Respondent did not submit any formal response. The Center notified the Parties of commencement of Panel Appointment on November 18, 2020. The Center appointed Peter Burgstaller as the sole panelist in this matter on November 24, 2020. 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 Complainants provide a diverse range of content and service businesses, such as publishing, distributing and licensing entertainment content primarily in the form of games around the world. They own numerous trademark registrations around the world for the mark FINAL FANTASY, including the following: - United Kingdom (“UK”) Registration No. 1,482,996, registered July 14, 1995; - U.S. Registration No. 1745735, registered January 12, 1993 (see Annex 7, 8, 9 to the Complaint). Additionally, the Complainants own the domain name The Complainants have never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the FINAL FANTASY trademark in any manner. The Respondent registered the disputed domain names on March 21, 2019, (Annex 1 to the Complaint) and used the disputed domain names in connection with a monetized parking page (Annex 6 to the Complaint). 5. Parties’ Contentions A. Complainant The Complainants are Square Enix Holdings Co. Ltd and Square Enix Group, with headquarters in Tokyo, Japan. The Complainants have a common grievance against the Respondent and its registration of the disputed domain names as well as they are affected in a similar fashion by the Respondent’s behavior. The Complainants employ more than 5,000 people and had net sales in the last fiscal year of approximately USD 2,5 billion. The Complainants provide a diverse range of content and service businesses, such as publishing, distributing and licensing entertainment content primarily in the form of games around the world under its internationally renowned brands including SQUARE ENIX and TAITO. The Complainants include a global network of leading development studios located in North America, Europe as well as in Japan and boast a valuable portfolio of intellectual property including FINAL FANTASY. The Complainants own the domain name The Complainants own 353 trademark registrations in 68 jurisdictions worldwide for the mark FINAL FANTASY; the first such trademark was filed in 1991 in the UK. The disputed domain names are confusingly similar to the FINAL FANTASY trademark since they entirely contain the Complainants trademark and merely add the numbers “18” and “20”. The Respondent has registered the disputed domain names on March 21, 2019, without having rights or legitimate interests in either of the disputed domain names. The Complainants have never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the FINAL FANTASY trademark in any manner. The FINAL FANTASY trademark of the Complainants is famous and/or widely known. The Respondent used the disputed domain names in connection with a monetized parking page. The disputed domain names therefore were registered and are used in bad faith. B. Respondent The Respondent did not reply to the Complainants contentions on the merits, it only stated “Im not sure what this is about, can you call to give me clarity?” 6. Discussion and Findings In the present case the Complainants are Square Enix Holdings Co. Ltd. and Square Enix Group (“multiple complainants”). Since the Complainants submit that they have a specific common grievance against the Respondent, and the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion, it is this Panel’s view that it is equitable and procedurally efficient to permit this Complaint filed by multiple complainants against a single respondent. According to paragraph 4(a) of the Policy, the Complainants must prove that (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the disputed domain names are confusingly similar to the Complainants registered distinctive marks FINAL FANTASY since they entirely contain this trademark and only adds the numbers “18” and “20”. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Finally, it has also long been held that suffixes such as a generic Top-Level Domain (“gTLD”) are generally disregarded. The Panel therefore finds that the Complainants have satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). In the present case the Respondent failed to submit a formal Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainants) and the Complainants contentions that the Respondent has no rights or legitimate interests in the disputed domain names, that the Respondent has no connection or affiliation with the Complainants, and the Respondent has not received any license or consent, express or implied, to use the Complainants trademarks FINAL FANTASY in a domain names or in any other manner, lead the Panel to the conclusion that the Complainants have made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainants. The Panel therefore finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainants must show that: - the disputed domain names were registered by the Respondent in bad faith, and The Complainants have a multitude of trademark rights around the world in the term FINAL FANTASY since 1993 (registration date) onwards and also offer their products and services especially on their website under the domain name The Panel is convinced that it is inconceivable that the Respondent has registered the disputed domain names without knowledge of the Complainants rights since the mark FINAL FANTASY is reproduced in the disputed domain names in its entirety. While the trademark is composed of the combination of two dictionary terms, it is a distinctive and non-descriptive combination of terms especially with regard to entertainment content primarily in the form of games, with the Complainant using FINAL FANTASY to identify its game(s) in commerce since 1987; hence, this leads to the necessary inference of bad faith. This impression is supported by the fact that the Respondent only added the numbers “18” and “20” to the Complainants trademark and displayed a monetized parking page with a related link “Games”. These facts lead this Panel to the conclusion that the disputed domain names were registered in bad faith by the Respondent. The Respondent moreover used the disputed domain names for addressing a website which includes commercial links for third-party websites, including a link labeled “Game” and another one “Pokemonn”. Such usage of domain names in connection with monetized parking pages constitutes bad faith use. This active use of the disputed domain names by the Respondent leads this Panel to the conclusion of bad faith use, and the Panel notes that the Respondent has failed to present any evidence of any (contemplated) good faith use in this respect so that there is no plausible reason for a bona fide future usage with regard to the disputed domain names by the Respondent. On the basis of these facts and findings, it is for the Panel incontestable that the disputed domain names were registered and are being used in bad faith according to paragraph 4(a)(iii) 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 names Peter Burgstaller
- the disputed domain names are being used by the Respondent in bad faith.
Sole Panelist
Date: November 28, 2020
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