The Complainant is a Japanese multinational company that provides publishing and entertainment services globally. One of the Complainant’s famous online publications is a video game review magazine found at <famitsu.com>. The title of this publication is ファミ通, which is a Japanese transliteration of “famitsu” (provided as annex).<\/p>\n
The disputed domain name <xn--bck9e5a2832f.com> (hereinafter “disputed domain name”) was registered on May 28, 2019 (provided as annex) and resolves to an Apple iTunes download page (provided as annex).<\/p>\n
According to the Registrar verification, the Respondent is Jan Everno. The Respondent’s provided address as being at Grandville, MI, the United States.<\/p>", "other_legal_proceedings": "
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.<\/p>", "no_response_filed": "
COMPLAINANT:<\/p>\n
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks.
First, the Complainant contends It has prior valid trademark rights in the ファミ通 mark and that it may satisfy the threshold requirement for standing under Paragraph 4(a)(i) of the UDRP by demonstrating ownership of a valid trademark [WIPO Case D2007-1629, F. Hoffmann-La Roche AG v. Relish Enterprises) (quoting “WIPO Decision Overview” at §1.1)]. The Complainant adds that its trademark registrations for the ファミ通 mark establish its prior rights pursuant to paragraph 4(a)(i) of the UDRP. <\/p>\n
The Complainant’s trademark rights in the ファミ通 mark date back to at least 1992, when the mark was first applied for in Japan (evidenced by Annex). Moreover, the Complainant’s rights in the United States date to at least 2004, when the mark was applied for at the USPTO (evidenced by Annex). On the other hand, the disputed domain was not even registered by the Respondent until May 2019 (evidenced by Annex). Therefore, the Complainant assumes that the Respondent (who is purportedly residing in the US) was on constructive notice of the Complainant’s US registration for some fifteen years prior to registering the disputed domain name. Furthermore, a cursory internet search of ファミ通 would prominently have led Respondent to Complainant’s website, indicating Complainant’s common law trademark rights in the US (evidenced by Annex).<\/p>\n
The Complainant adds that the ファミ通 mark is essentially identical to the disputed domain name. The Complainant points out that “[a] showing of confusing similarity only requires a “simple comparison of the mark relied upon with the domain name in issue.” (WIPO Case No. D2009-0227, Research in Motion Limited v. One Star Global LLC).<\/p>\n
Consequently, the Complainant contends that a simple comparison of the ファミ通 mark and the disputed domain name demonstrates that they are essentially identical, as the addition of the .com top-level domain is negligible. Therefore, the Complainant asserts that has established the first element of the UDRP under Paragraph 4(a).<\/p>\n
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent not only registered the disputed domain name decades after the Complainant’s rights in the famous and distinctive ファミ通 mark were registered, but also is using the disputed domain name to redirect internet users to the Apple website, for the Respondent’s commercial gain (evidenced by Annex). Additionally, the Complainant has demonstrated longstanding registration and exclusive global use of the ファミ通 trademark (evidenced by Annexes), and the Complainant’s rights predate any registration or use of the disputed domain name by the Respondent by 27 years at least. <\/p>\n
The Complainant suggests that in considering whether a respondent has a right or legitimate interest in a disputed domain name under Paragraph 4(c) of the UDRP, the Panel may consider: (i) whether the respondent is using the disputed domain in connection with a bona fide offering of goods or services; (ii) whether the respondent is commonly known by the disputed domain; and (iii) whether the respondent is making a legitimate noncommercial use or fair use of the disputed domain name.<\/p>\n
In that context, the Complainant brings the following statements:<\/p>\n
“Respondent Does Not Use, And Has Not Used, The Disputed Domain name In Connection With A Bona Fide Offering Of Goods Or Services
The website resolving from the Disputed Domain Name is an Apple iTunes download page. See Annex. Use of a domain name that is confusingly similar to a complainant’s mark to promote the sales of third-party commercial products online, is not a bona fide use of the Disputed Domains. See, e.g., WIPO Overview 2.5.3 “Commercial Activity” (“a respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests”); Sanofi-aventis v. Brian Nagele, D2011-0669 (WIPO Arbitration and Mediation Center June 6, 2011) (finding bad faith when the disputed domain was used by the Complainant to promote a competitive medicinal product). <\/p>\n
Respondent is Not Commonly Known by the Disputed Domain Name
There is no evidence from the WHOIS that Respondent is commonly known by the Disputed Domain name. See Annex; Braun Corp. v. Loney, Claim No. 699652 (Forum July 7, 2006) (finding respondent was not commonly known by the disputed domain names where the Whois record did not indicate such). Rather, the fact that the Disputed Domain is identical to Complainant’s ファミ通 mark indicates that Respondent is attempting to use the Disputed Domain name to profit from Complainant’s goodwill in that famous mark. <\/p>\n
Respondent Does Not Use The Disputed Domain Name For Any Legitimate Or Noncommercial Fair Use
The website available at the Disputed Domain Name is not used for any sort of non-commercial fair use such as parody or comment. Instead, the website only redirects to a third-party software download site. See Annex. Use of a domain name that is confusingly similar to a complainant’s mark to promote the sales of third-party commercial products online, is not a bona fide use of the Disputed Domain name. See, e.g., WIPO Overview 2.5.3 “Commercial Activity” (“a respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests”); Sanofi-aventis v. Brian Nagele, D2011-0669 (WIPO Arbitration and Mediation Center June 6, 2011) (finding bad faith when the disputed domain was used by the Complainant to promote a competitive medicinal product).”<\/p>\n
In consequence, the Complainant asserts that has met Its burden to make a prima facie showing that the Respondent has no rights or legitimate interest in the disputed domain name. As such, the burden shifts to the Respondent to rebut Complainant’s showing. According to the Complainant, the evidence strongly demonstrates that the Respondent lacks any rights or legitimate interest in the disputed domain name and will be unable to meet this burden.<\/p>\n
The Complainant contends that the disputed domain name has been registered and is being used in bad faith.
While demonstrating that the disputed domain name has been registered and is being used in bad faith, the Complainant raises the following statements:<\/p>\n
“Respondent Intentionally Attempts To Divert Internet Users By Creating Likelihood Of Confusion
A respondent has registered and\/or used a disputed domain name in bad faith where the purpose of the registration is to cause confusion as to the source of the website or other service offered via the domain name. Under Paragraph 4(b)(iv) of the UDRP, the Panel may make a finding that the registrant has registered and used a domain name in bad faith where “by using the domain name, [the registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [registrant’s] web site or location or of a product or service on [registrant’s] web site or location.” <\/p>\n
According to the Complainant the Respondent has made active use of the disputed domain name to redirect to the Apple website, and to offer the disputed domain name for sale. Use of a domain name that is confusingly similar to a complainant’s mark to promote the sales of third-party commercial products online, is not a bona fide use of the domain names. Instead, Respondent is merely taking advantage of the Complainant’s fame and goodwill to attract users to Respondent’s website. That is clearly a bad faith use under the UDRP. <\/p>\n
Respondent Registered the Disputed Domain Name Primarily For The Purpose Of Disrupting Complainant’s Business
By its prominent use of Complainant’s globally famous, coined ファミ通 trademark, Respondent is using the disputed domain name for no other reason than to disrupt Complainant’s business by trying to confuse internet users into believing they might be led to a website run by the Complainant or its subsidiary. This practice alone is enough to cause a disruption to Complainant’s business, as any reasonable person is likely to be confused about the source or affiliation of this Domain Name and the website run thereon. <\/p>\n
Such use results in a disruption to Complainant’s business and demonstrates Respondent’s bad faith use and registration of the disputed domain name. Moreover, the fact that Respondent has undertaken such actions decades after Complainant’s trademark rights arose is further evidence of a bad faith registration for the sole purpose of disrupting Complainant’s business for Respondent’s own commercial gain. <\/p>\n
Respondent Was Or Should Have Been Aware Of Complainant’s Rights In The ファミ通 Mark and Registered The Disputed Domain Name In Bad Faith
It can reasonably be inferred that Respondent was aware of Complainant’s rights given the way the Respondent has been using the domain name. It is also impossible that a name as specific and peculiar as ファミ通 could have been found or chosen by chance. Alternatively, even if Respondent did not have actual knowledge of Complainant’s Marks (which it likely did), Respondent had a duty to ensure that the registration of the Disputed Domain Name would not infringe a third party’s rights. <\/p>\n
Respondent is a Serial Cybersquatter; Further Proving Bad Faith in This Case
UDRP panels typically find that a pattern and practice of past cybersquatting is a very strong indication of bad faith registration and use under the Policy. See, e.g., WIPO Overview 3.1.2 (“UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration”) (citing cases). In this case, Respondent’s pattern of bad faith cybersquatting is abundantly clear. According to the UDRP.tools website, Respondent has lost at least 20 UDRP decisions” (see e. g. WIPO No. D2022-1801; Forum No. 1983493; Forum No. 1902824; WIPO No. D2020-1393).<\/p>\n
RESPONDENT:<\/p>\n
No administratively Complaint Response has been filed.<\/p>", "rights": "
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP).<\/p>", "no_rights_or_legitimate_interests": "
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the UDRP).<\/p>", "bad_faith": "
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP).<\/p>", "procedural_factors": "
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.<\/p>", "decision": "Accepted", "panelists": [ "Radim Charvát" ], "date_of_panel_decision": "2023-01-24 00:00:00", "informal_english_translation": "
The Complainant is the owner of following trademark registrations:<\/span><\/p>\n Trademark<\/span><\/strong><\/p>\n<\/td>\n Jurisdiction<\/span><\/strong><\/p>\n<\/td>\n Reg. No.<\/span><\/strong><\/p>\n<\/td>\n Filing Date<\/span><\/strong><\/p>\n<\/td>\n Reg. Date<\/span><\/strong><\/p>\n<\/td>\n<\/tr>\n ファミ通<\/p>\n<\/td>\n Japan<\/span><\/p>\n<\/td>\n 3042467<\/span><\/p>\n<\/td>\n Apr. 16,1992<\/span><\/p>\n<\/td>\n May 31, 1995<\/span><\/p>\n<\/td>\n<\/tr>\n ファミ通 (stylized)<\/span><\/p>\n<\/td>\n United States<\/span><\/p>\n<\/td>\n 3064830<\/span><\/p>\n<\/td>\n Sept. 2, 2004<\/span><\/p>\n<\/td>\n Mar. 07, 2006<\/span><\/p>\n<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n The Complainant proved its ownership of listed trademark registrations by the submitted extract from the Registers.<\/span><\/p>",
"decision_domains": {
"xn--bck9e5a2832f.com ": "TRANSFERRED"
},
"panelist": null,
"panellists_text": null
}\n\n
\n \n \n \n \n \n \n \n \n \n \n \n \n \n \n \n \n \n