The Complainant is FC2, Inc., United States of America, represented by Vondst Advocaten, Netherlands.
The Respondent is WhoisGuard, Inc., Panama / David Chan, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2021, 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 March 30, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on April 3, 2021 and on April 6, 2021. The Center verified that the Complaint together with the amended Complaints 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 April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2021. The Center appointed Taras Kyslyy as the sole panelist in this matter on May 12, 2021. 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, established in 1999 in the United States of America, is the third most popular video hosting service in Japan. The Complainant offers various free and paid web services in various languages such as Japanese, including domain, blog, chat, rental server etc. The Complainant owns FC2 trademark registrations in various jurisdictions, including for instance international registration No. 1275290, registration date March 16, 2015. The Complainant also owns trademark registrations for its figurative trademark including international registration No.1275291, registration date March 16, 2015. The Complainant owns a number of domain name registrations featuring FC2 trademark as follows: The disputed domain name was registered on October 9, 2018 and resolved to a website featuring the Complainant’s word and figurative trademarks and providing adult sexually explicit content with pornography elements targeting Korean Internet users. At the time of the decision the disputed domain name does not resolve to any active website. The Respondent also owned other infringing domain names incorporating the Complainant’s trademark such as The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark, the letters ‘kr’ from the code country Top-Level-Domain (“ccTLD”) for the Republic of Korea “.kr” and the generic Top-Level Domain (“gTLD”) reference “.com” are added. The Complainant’s trademark is recognizable within the disputed domain name. The addition of the descriptive letters “kr”, which refer to (Republic of Korea) Korean content, is insufficient to prevent Internet user confusion. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and the Complainant has not given any permission to the Respondent, neither for the use of the disputed domain name, nor for the use of the Complainant’s trademarks. The Respondent is not commonly known by the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Respondent attempted to intentionally attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as regards the source of the website or of a product or service on that website. The Respondent knowingly registered the disputed domain name containing an exact reproduction of the Complainant’s trademark to capitalize on its consumer recognition. The designation “fc2” is unique and arbitrary as such and it is unlikely that the Respondent devised the term “fc2kr.com” on its own. The Respondent had registered other domain names containing the FC2 trademarks in other infringing variations. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Pane finds that the disputed domain incorporates the entirety of the Complainant’s trademark. According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that addition of “kr” letters does not prevent a finding of confusing similarity under the first element. Considering the above, the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). The disputed domain name used to redirect Internet users to a website with a logo similar to the Complainant’s and prominently featuring the Complainant’s word trademark to make the Internet users believe that they actually access the Complainant’s website, or the website authorized by the Complainant. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al.,WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211). The Respondent has no rights or legitimate interests in the disputed domain name resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302). Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to section 3.2.2 of the WIPO Overview 3.0 noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), UDRP panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. The Panel finds that incorporating the Complainant’s trademarks and featuring it at the website at the disputed domain name, as well as the Respondent’s pattern of registering other domain names incorporating the Complainant’s trademarks confirm the Respondent knew and targeted the Complainant and its trademarks when registering the disputed domain name, which is bad faith. According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain name was resolving to a website featuring the Complainant’s trademarks and falsely pretended to be version of a Complainant’s local website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith. The fact that the website at the disputed domain name provided adult sexually explicit content with pornography elements is an indication that the disputed domain name has been registered and used in bad faith (see, e.g., Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022, Miroglio S.p.A. v. Mr. Alexander Albert W. Gore,WIPO Case No. D2003-0557). Although at the time of this decision the disputed domain name resolves to an inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman),WIPO Case No. DPW2017-0003). Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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 name Taras Kyslyy
Sole Panelist
Date: May 21, 2021
Full & Egal Universal Law Academy