WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capcom Co. Ltd and Capcom U.S.A. Inc. v. Dan Walker trading as "Namesale"
Case No. D2000-0200
1. The Parties
The first Complainant is Capcom Co. Ltd, a Japanese corporation with a principal place of business at 3-1-3 Uchihiranomachi, Chuo-Ku, Osaka, Japan. The second Complainant is Capcom U.S.A. Inc., a United States corporation of the State of California, with its principal place of business at 475 Oakmead Parkway, Sunnyvale, California, 94086-4709, United States of America. The second Complainant is a wholly-owned subsidiary of the first Complainant.
The Respondent is Dan Walker, the administrative and billing contact for the domain name at issue. The address given for the Respondent is 15414 Smokey Point Boulevard, PMB 339, Arlington, Washington 98223, United States of America.
2. The Domain Name and Registrar
The domain name at issue is "residentevil.com". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").
3. Procedural History
A complaint was submitted electronically by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on March 23, 2000. The signed original, together with four copies, forwarded by courier, was received by WIPO Center on March 24, 2000. An acknowledgement of receipt was sent by WIPO Center to the Complainant on March 23, 2000.
On March 23, 2000, a request for Registrar verification was transmitted by WIPO Center to NSI, requesting it to:
Confirm that a copy of the complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect at the time of the registration of the domain name.
Indicate the current status of the domain name.
By email dated March 24, 2000, NSI advised WIPO Center as follows:
NSI had received a copy of the complaint from the Complainant.
NSI is the Registrar of the domain name registration "residentevil.com".
"Namesale" is the current registrant of the said domain name. Other relevant information is shown as follows:
The administrative and billing contact is:
Walker, D (DW1213) webphone@EMAIL.com, Andrina Diversified, 15414 Smokey Point Boulevard, PMB 339, Arlington, WA 98223
Telephone 206 226 9263; Fax 206 994 0705
Technical and zone contact:
The Public DNS (DT145-ORG) soa-nic@GRANITECANYON.COM
Granite Canyon Group, 6940 N. Academy Boulevard 412, Colorado Springs, CO 80918, U.S.A.
NSIís 4.-0 Service Agreement is in effect.
The domain name registration "residentevil.com" is in "Active" status.
With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
As can be deduced from the advice of NSI that the domain name in question is still "active", the Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on March 27, 2000, transmitted by facsimile, post/courier and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was emailed to NSI and ICANN.
The Panel has independently determined and agrees with the assessment of WIPO Center that the complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The Complainant elected to have its complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by April 15, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
The Respondent made no Response to the Complaint. On April 17, 2000, WIPO Center formally issued a Notification of Respondent Default.
On April 20, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.
On April 20, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence.
On April 20, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on April 26, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by May 3, 2000.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainants have provided evidence of extensive rights to the trademark RESIDENT EVIL. Registration of the mark for electronic video games, toys and related products (including promotional clothing) has been achieved in several countries in North America, Europe and Asia, including the United States and Canada. There are applications pending for trademark registration in other countries.
The Complainants released the first RESIDENT EVIL video game in March 1996. This established the survival horror genre, inspiring many copycat products. Some 3 million units of the original RESIDENT EVIL and its successor game were sold worldwide.
The US release of RESIDENT EVIL 2 game in January 1998, broke industry records by selling 380,000 units in a debut weekend, grossing some $19 million. Later successful developments of the RESIDENT EVIL game have sold extensively. To date, the Complainants estimate that 11 million units of RESIDENT EVIL in its various forms have been sold worldwide.
The Complainants have signed licensing deals for the creation of a movie and a line of action figures. In August 1997, RESIDENT EVIL was awarded Consumerís Best Playstation Game Overall.
The Respondent has been granted no rights granted by the Complainants to use the name RESIDENT EVIL.
The Respondent registered the domain name "residentevil.com" on May 9, 1998, well after the Complainants obtained trademark registration in a variety of jurisdictions.
In November 1999, the Respondent offered to sell the domain name to the Complainants for $800. The Complainants declined to purchase because it considered it had the rights to the name.
On November 29, 1999, the Respondent posted the domain name for sale on an on-line auction site with an asking price of $850. On the auction page, the Respondent stated in part:
"A catchy name, this domain name is extremely valuable. This versatile name would be a great investment for some future-minded entrepreneur. Good domain names like this are becoming rarer and rarer".
On December 1, 1999, the Complainants required the Respondent to transfer the domain name. On December 9, 1999, the Respondent emailed the Complainantsí counsel to the effect that he had cancelled the registration and was no longer using the domain name.
On January 31, 2000, the Respondent advised the Complainantsí lawyer that he had decided not to relinquish ownership on the advice of counsel. The Complainants offered to reimburse the Respondent for the registration costs and for the costs of registering a new domain name. The Respondent considered this an insufficient amount, but opined that the Complainant should buy the name anyway.
5. Partiesí Contentions
The Complainant contends that the Respondent registered the domain name "residentevil.com" in a blatant attempt to capitalise unfairly on the fame and worldwide success of the Complainantsí video game, which had become well-known in many countries long before the Respondent had registered the domain name. The Complainants allege that the Respondent has no rights to the name and that his attempts to sell it are evidence of use in bad faith.
The Respondent has made no contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Respondent has no legitimate interests in respect of the domain name.
The domain name has been registered and used in bad faith.
The Panel decides that the domain name "residentevil.com" is similar to the Complainantís trademark, RESIDENT EVIL.
The Panel also decides from the unchallenged evidence that the Respondent has no right or legitimate interest in respect of the domain name.
The domain name must not only be registered in bad faith, but must also be used in bad faith. In determining whether it has been so used, the Panel adopts with respect the reasoning set out by the learned Panelist in World Wrestling Federation Entertainment Inc. v. Michael Busman, Case No. D 99-001. That was a case where the Respondentís domain name, registered in Australia, was identical to a service mark and trademark of the Complainant registered in the United States. The Respondent there had offered to sell the domain name to the Complainant "for valuable consideration in excess of out-of-pocket expenses".
The World Wrestling decision has been followed in other WIPO Center panel decisions in cases where, as here, someone has attempted to capitalise on a name known the world over by making a pre-emptive registration of a domain name. See, for example, Harrods Ltd v. Boyd (D2000-0060) and China Ocean Shipping (Group) Co. Ltd v. Cao Shan Hui (D2000-0066).
7. Principles of Law Applicable
It is legitimate under paragraph 15(a) of the Rules that the Panel should look at principles of law deemed applicable. Since the Respondent is domiciled in the United States, and any legal action would have to be taken against him in that country, it is therefore helpful to look at principles of law set out in decisions of Courts in the United States.
The Panel notes Court decisions in the United States, i.e., Panavision International LP v. Dennis Toeppen et al 141 F 3d 1316 (9th Circuit) 1998 and Intermatic Inc v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) as supporting the views taken. In the Panavision case, the Respondent there was characterised as a "spoiler" who prevented the trademark holder from doing business on the Internet under its trademark name unless it paid the Respondentís fee.
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "residentevil.com" be transferred to the Complainant.
Hon Sir Ian Barker QC
Dated: May 1, 2000