The Complainant is Sega Corporation of Tokyo, Japan, represented by Sanderson & Co, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Dave Wingrove of High Wycombe, Buckinghamshire, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <segagames.net> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2009. On June 19, 2009, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the disputed domain name. On June 22, 2009, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response, confirming that:
(a) the disputed domain name is registered with it;
(b) the Respondent is listed as the registrant;
(c) the Respondent's contact details contained in the Complaint are correct; and
(d) the languages of the registration agreement are German and English.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2009. On or about June 30, 2009, the Respondent submitted a short facsimile to the Center and the Complainant's representative. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2009. The Respondent did not submit any further response. Accordingly, the Center notified the Respondent's default on July 22, 2009.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 29, 2009. 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.
The Complainant was founded in 1945. It started providing coin operated games under the SEGA trademark in a stylised form in 1968. It has been using the trademark in plain word and stylised form continuously since then on a wide range of computer related games.
Its current market capitalisation is approximately USD615 million. The Complainant has international divisional offices to cover international markets including Sega Corporation, in Tokyo, Japan; Sega Europe Ltd., in London, United Kingdom; Sega of America Inc., in San Francisco, United States; and Sega Australia in Sydney, Australia. One of its products, Virtual Fighter, was first released in 1993 and is on display in the Smithsonian museum. Another of its products, Sonic, has sold over 50 million copies. The “star” of that game, Sonic, was voted the most popular video game character in the United Kingdom in a survey conducted by the Daily Telegraph in 2008.
The Respondent apparently holds a large number of domain names and claims to use them, or many of them, for online news sites.
The Respondent registered the disputed domain name in July 2000. It currently resolves to a website “www.astragames.com/games/sega”. The website at the URL features information and promotional material related to the Complainant's products. The website to which the domain name <astragames.com> resolves is not limited just to the Complainant's products, however. It also features information and links related to Nintendo's Wii platform, various Sony platforms including Playstation 3, PS2, PSP and Playstation. It also features a section for Microsoft's Xbox. At the home page, it is stated that:
Astragames site is for the purpose of giving links and information on games and news online
We make no profit and only have the satisfaction of providing information online
The Registrar's email on June 22, 2009 in response to the Center's request for registrar confirmation also drew attention to the impending expiry of the disputed domain name on July 29, 2009. Apparently, under the terms the registry, Verisign, operates the .net gTLD:
(a) for 30 days following the expiry date, the registrant may renew the domain name on payment of the normal registration fees;
(b) after the expiry of that 30 day period, there is a further 30 day period, the Redemption Grace Period, in which the registrant may still pay a fee to “reanimate” the registration;
(c) if the fee is not paid by the expiry of both periods, the registration will be deleted and the domain name will become available for registration at large.
The Registrar advised that registration during the Redemption Grace Period would be at a special, increased rate as it would require human intervention to re-register the domain name. Accordingly, the Registrar recommended that one or other of the parties should pay the renewal fee before the expiry of the domain name on July 29.
This communication provoked several rounds of communication in which the parties sought to clarify the consequence under the Policy of the Registrar's communication. In the end, this was resolved by payment by the Respondent of the renewal fee.
The Respondent has been duly served with the Complaint as is evidenced by his facsimile of on or about June 30, 2009 to the Complainant's representative; a copy of which was also faxed to the Center and his participation in the communications arising from the impending expiry of the disputed domain name.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Accordingly, under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
There are two parts to this inquiry: The Complainant must demonstrate that it has trademark rights in a sign and, if so, the disputed domain name must be shown to be identical or confusingly similar to those trademark rights.
The Complainant has clearly established trademark rights in the sign SEGA. The Complaint lists 11 registrations for the trademark in both plain script or a stylised script registered in the United Kingdom or as CTMs dating from 1962. Annex 6 to the Complaint also includes 12 pages of registrations in a large number of countries for those trademarks or incorporating the sign SEGA. Six and one half pages are for versions of the SEGA trademark itself.
In addition, having regard to the length and extent of use of the trademark, SEGA, particularly in variations of the stylised form since 1968, the Complainant clearly has rights at common law in the trademark as well.
The question of resemblance for the purposes of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant's trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c) of the Policy.
Here, the disputed domain name differs from the plain text version of the SEGA trademark only by the addition of the descriptive term “games” and the gTLD, “.net”. There is no doubt, therefore, that the disputed domain name is confusingly similar to the Complainant's trademark SEGA, whether in plain or stylised form.
Accordingly, the Complainant has established the first requirement under the Policy.
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) sets out three situations which may constitute rights or legitimate interests under the Policy. They are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown. They do provide, however, a guide to what is contemplated as permissible under the Policy.
In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor, and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.1.
The Complainant states that the Respondent does not have any relationship with or authorisation from it. The Complainant further points out that the disputed domain name bears no relationship to the Respondent's name.
In a letter to the Complainant's representative dated April 4, 2009 in response to a letter of demand, the Respondent stated that he registered the disputed domain name nine years ago as part of a news and information project with the intention that anyone interested in the Complainant's products could find information on his website at “www.astragames.com”. The Respondent specifically denied that he was using the disputed domain name or site to make a profit, but rather, in addition to the information provided to users, the website helped him “give content and awareness to [his] other UK news websites”. The Respondent declared that he operated as a noncommercial project to promote information and news. He stated that it cost him several thousand pounds to run his project each year, having some 800 domain names. The letter went on to offer to redirect the disputed domain name to the Complainant's website for a modest yearly charge of GBP1,000 “because [he] estimate[s] that the domain is now worth [GBP]55,000 and further finance is needed to keep [his] project running.” Alternatively, he requested payment of GBP55,000 to transfer the domain name to the Complainant.
In his facsimile received by the Center on June 30, 2009, the Respondent stated that he had not purchased the disputed domain name with the intention of demanding large sums of money, but was seeking a gesture of goodwill to help run his news sites.
The Panel considers that there are a number of problems with the Respondent's claims to rights or legitimate interests in the disputed domain name. First, the disputed domain name resolves to a website which provides information about and promotes competing products to those of the Complainant's as well as information about the Complainant's products. As the Complainant points out (citing the cases relating to use by a reseller such as Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095), previous UDRP panels have usually rejected claims to rights or legitimate interests where someone's trademark, or a term confusingly similar to it, is being used to promote competitive products as well as the trademark owner's products.
Unlike cases such as Experian, supra, it is not clear that the Respondent is in fact selling games from the website to which the disputed domain name resolves. There are some links on some pages of the “buy” type which appear to take the browser through to the vendor's website. The Respondent, however, specifically denies that he is selling products from the website.
Although the Respondent says he is not selling products from the website, he does admit that he uses and has always intended to use the disputed domain name and the website to drive content to his other, local news sites. This avowedly commercial purpose, coupled in this case with the use of competitors' products in addition to the Complainant's products, indicates that the Respondent is using the disputed domain name to take advantage of the goodwill and reputation associated with it. UDRP panels have repeatedly held that use to obtain a commercial benefit does not qualify as a bona fide use under the Policy and the Panel concludes that that is the case here.
The length of registration of the disputed domain name does not assist the Respondent in this case. First, it is clear from his admitted purpose in registering the disputed domain name that he knew full well its trademark significance. Secondly, mere lapse of time is not usually sufficient to deprive someone of their trademark rights. It would need to be shown that the trademark had lost its distinctive character, which is not the case here, or there was some other conduct by the Complainant which induced the Respondent to act as he did. The Respondent does not point to positive action by the Complainant which could give rise to an estoppel or acquiescence.
Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), 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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
As the terms of the paragraph make clear, these are examples only and not an exhaustive enumeration of the circumstances in which registration and use in bad faith are found.
It is clear from the Respondent's communications that he was well aware of the trademark significance of the disputed domain name when he registered it. As noted in section 5B above, the Respondent admittedly sought to take advantage of that trademark significance when he registered the disputed domain name both to provide information, amongst other things, about the Complainant's products and to drive traffic to the Respondent's other interests.
The reasons for rejecting the Respondent's assertions of rights or legitimate interests in the disputed domain name lead also to the conclusion that the disputed domain name was registered and is being used in bad faith. This conclusion is reinforced by the very substantial sums sought be the Respondent by way of goodwill gesture in return for the use or transfer of the disputed domain name; sums which are far in excess of the registration costs even over a nine year period.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <segagames.net> be transferred to the Complainant.
Warwick A. Rothnie
Dated: August 11, 2009