The Complainant is FC2, Inc., United States of America (“Unites States”), represented by Vondst Advocaten N.V., Netherlands.
The Respondent is Hideyuki Yoshida, Panama, self-represented. 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 23, 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 an amended Complaint on April 3, 2021. 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 April 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2021. The Response was filed with the Center on April 26, 2021. The Center appointed Steven A. Maier as the sole panelist in this matter on April 30, 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 is a company located in Nevada, United States and is a provider of video blogging, hosting and related services in Japanese and other languages. The Complainant is the owner of European Union trademark number 1275290 for the word mark FC2, registered on March 16, 2015 for goods and services in various classes, including streaming of video material in International Class 38. The Complainant is also the owner of European Union trademark number 1275291 for a figurative “unicorn” logo (the “Unicorn Logo”), also registered on March 16, 2015 for similar goods and services as above. The disputed domain name was registered on December 15, 2019. The disputed domain name has resolved to a website at “www.fc2ppv.tv”. The website is headed “FC2 PPV” and offers links to pornographic videos. The website includes numerous items labelled in the Japanese language and lists nine categories of services on its homepage, all of which are prefixed “JAV”, which the Panel understands to refer to “Japanese Adult Video”. The website also includes advertising to pornography-related services. 5. Parties’ Contentions A. Complainant The Complainant states that it was established in 1999 and is the third most popular video hosting service in Japan. It operates a website at “www.fc2.com” and is the registrant of a number of other domain names comprising “fc2” together with a generic or country-code Top-Level Domain. The Complainant submits that its name and mark FC2 is a coined term which has no meaning other than to identify the Complainant as the source of the various goods and services which it provides. The Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights. It contends that its mark FC2 is clearly recognizable within the disputed domain name and that the addition of the term “ppv”, which refers to pay-per-view content, does not distinguish the disputed domain name from its trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its FC2 trademark, that the Respondent has not commonly been known by that name and that the Respondent is not making any bona fide commercial use of the disputed domain name. The Complainant contends that the disputed domain name will inevitably give the impression that it is connected with pay-per-view content provided by the Complainant and that the Respondent’s website further reinforces that impression by using the heading “FC2 PPV”. While the Complainant contends that the Respondent uses both of its trademarks on his website, the Panel notes at this point that no evidence has been provided of any such use of the Unicorn Logo. The Complainant submits that the disputed domain name was registered and is being used in bad faith. It states that the disputed domain name deliberately uses its FC2 trademark together with the term “ppv” to give the false impression that it is owned or operated by the Complainant for the purpose of providing pay-per-view content. The Complainant submits that, having gathered audiences by this deception, the Respondent then takes unfair advantage of the Complainant’s trademark by generating advertising revenue from its pornographic videos. The Complainant further contends that the Respondent’s use of the disputed domain name to direct to pornographic content is damaging to the Complainant’s reputation among its users. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent submits that he arrived at the disputed domain name by using a “domain name suggestion tool” aimed at identifying short, available domain names. He states that he was unaware that the term FC2 related to any other organization, that he not has used it in any manner related to the Complainant and that he has not attempted to take advantage of any trademark. 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 that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. A. Identical or Confusingly Similar The Complainant has established that it has registered trademark rights in the mark FC2. The disputed domain name includes that trademark together with the term “ppv”, which the Panel finds to be a generally accepted abbreviation for the term “pay-per-view”. The inclusion of this term does not prevent the Complainant’s trademark from being recognizable in the disputed domain name and the Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The disputed domain name is used by the Respondent for the purpose of what appears to be a revenue-generating website. In the view of the Panel, the legitimacy of that use of the disputed domain name turns upon whether, as the Respondent submits, he chose the disputed domain name simply for convenience and without any knowledge of the Complainant’s trademark and business or whether, as the Complainant suggests, he chose it in order to mislead Internet users into believing the website was connected with the Complainant. While the Complainant alleges that the Respondent uses both its trademarks on his website, which would indeed be persuasive evidence of misrepresentation, the Panel has not found the Unicorn Logo to be present on the Respondent’s website. Nor does the Panel consider that the use by a third party of the term FC2 would, in itself, be conclusive of an attempt to take unfair advantage of the Complainant’s trademark. The Panel is not, however, convinced by the Respondent’s explanation for his selection of the disputed domain name. While the term “fc2ppv” is indeed short, the Panel has been given no reason why the term “fc2” should have been thought appropriate for the Respondent’s website, nor does the Panel consider it likely that a “domain name suggestion tool” would have introduced the term “fc2” without user input to that effect. The Panel is also significantly influenced by the fact that the Complainant’s trademark and website are particularly popular in Japan and that the Respondent’s website is directed to Japanese pornography. The Panel is aware of nothing in the term “fc2” that implies a connection with Japan other than the Complainant’s use of its FC2 mark and, principally for that reason, the Panel finds on the balance of probabilities that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of falsely implying a connection with the Complainant and its business. This does not amount to use of the disputed domain name for legitimate commercial purposes and the Panel therefore finds 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 as above are also relevant to the issue of bad faith. The Panel repeats its finding, on the balance of probabilities, that the Respondent registered the disputed domain name in the knowledge of the Complainant’s FC2 trademark and with the intention of unfairly capitalizing upon the likely association by members of the public between the disputed domain name and the Complainant. The Panel further finds that, by misrepresenting a connection with the Complainant and its services by its adoption of the disputed domain name, the Respondent has used the disputed domain name misleadingly to attract Internet users to his website for financial gain, and also in circumstances that are liable to damage the reputation of the Complainant. The Panel finds in particular that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel therefore concludes 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, Steven A. Maier
Sole Panelist
Date: May 5, 2021
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