WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VIZ Media, LLC v. NarutoFan.com
Case No. D2011-0021
1. The Parties
The Complainant is VIZ Media, LLC of San Francisco, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.
The Respondent is NarutoFan.com of Calgary, Alberta, Canada, represented by Burnet, Duckworth & Palmer LLP, Canada.
2. The Domain Name and Registrar
The disputed domain names <bleachworld.com>, <narutofan.com> and <narutofan.net> are registered with GoDaddy.com, Inc. (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2011. On January 6, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 6, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 January 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2011. The Response was filed with the Center on February 9, 2011.
On February 16, 2011, the Complainant made a supplemental filing responding to a number of matters raised in the Response. On February 17, 2011, the Respondent also made a supplemental filing objecting to the supplemental filing made by the Complainant.
The Center appointed James A. Barker as the sole panelist in this matter on February 23, 2011. 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.
On March 7, 2011, the Panel issued a panel order requesting the Complainant to provide evidence of the trademark license on which it relies. In response to that order, the Complainant submitted that evidence on March 10, 2011. The Respondent replied to that submission on March 16, 2011.
4. Factual Background
The Complainant is a subsidiary and licensee of Kabushiki Kaisha Shueisha, a Japanese corporation.
The Complainant is an anime, manga, and a Japanese entertainment company. “Anime” refers to Japanese animation and “manga” refers to comics and print cartoons conforming to a style developed in Japan in the late 19th century.
The Complainant is a licensee of its parent Shueisha with respect to “Bleach” and “Naruto”, internationally renowned anime and manga series. The Complainant publishes and distributes the English-language versions of the “Bleach” and “Naruto” manga series in the United States, Canada, United Kingdom of Great Britain and Northern Ireland, South Africa and Australia. VIZ Media licenses the “Bleach” and “Naruto” anime programs for television broadcast and video distribution in various territories worldwide outside of Asia, including, but not limited to, the United States, Canada, and South America.
“Bleach” is a Japanese manga series that has been serialized in the Japanese manga anthology Weekly Shonen Jump, published by VIZ’s parent Shueisha, since August 2001. Since its publication, “Bleach” has led to an ongoing animated television series, two original video animations (a form of direct-to-video program), several animated feature films, and numerous video games on several video platforms. Over 67 million copies of “Bleach” manga volumes have been released in Japan and approximately 2 million copies in North America. Over 1.4 million DVDs of the “Bleach” anime series have been released in North America to-date. “Bleach” remains among the best-selling anime and manga properties in Japan and the United States.
“Naruto” is a Japanese manga series first published by VIZ Media’s parent Shueisha in September 1999 in the magazine Weekly Shonen Jump. Over 100 million copies of the “Naruto” manga series have been released in Japan and approximately 6 million copies in North America.
The Complainant operates websites providing further information on the “Naruto” and “Bleach” properties at <naruto.viz.com> and <bleach.viz.com>, respectively, and operates a website showing free streaming episodes to viewers in the United States of “Bleach” and “Naruto” at <vizanime.com>.
The Complainant’s parent and licensor Shueisha owns trademark registrations in the United States and Canada for NARUTO and BLEACH. NARUTO is registered in Canada for various goods and services including downloadable publications and computer games, video game discs, comic books and magazines, and providing entertainment information via computer network. The Complainant provides evidence of those rights arising in marks filed as early as (in Canada) 2002 for NARUTO and 2006 for BLEACH, and (in the United States) 2002 for NARUTO and 2004 for BLEACH.
The Complainant provides evidence of the Respondent’s websites as they were on December 17, 2010. On that date, the Respondent’s website at ”www.narutofan.com” reverted to a website containing a list of posted comments on the Complainant’s series. In addition, the website contained the statements such as
“Don't miss out on the action any longer! animePLUS! gives you access to tens of thousands of files from thousands of anime series, from the very latest hits to the greatest classics, and everything in between! All for direct HTTP download!”. The website features a facility for a login via a user name and password. It also appeared to advertise a number of products unrelated to the Complainant’s “Naruto” series. The Respondent’s website at “www.bleachworld.com” was relevantly similar.
The Respondent provides evidence of its website at “www.narutofan.com”, as it was on February 9, 2011. On that day, the website featured the prominent headline “narutofan #1 for all things naruto”. A number of links are provided, all apparently relating to the “Naruto” series, as well as a series of comments posted by users on the website. The Respondent also provides evidence of its website at “www.bleachworld.com”, also as it was on February 9, 2011. This website also presents a series of comments relating to the “Bleach” series, and a statement that “We created this site to offer fans the best Bleach content. Since Bleach is a fairly new anime we believe it is our job to inform you about the latest news and happenings first...”. The Respondent does not provide evidence of the website at “www.narutofan.net”.
At the date of this decision, the websites at <narutofan.com> and <narutofan.net” redirect to another website at <anifreak.com> with the statement “After nearly a decade of serving you the latest Naruto news, information, and releases, we have unfortunately been forced to change our domain name by the very company who we have had so much admiration for over the years, VIZ Media. As a Naruto Fan myself it saddens me that this was necessary, however, I am looking forward to a new beginning, and expanding our horizons, over on our new site! Please update your bookmarks and come on over!”. A relevantly similar statement is made at “bleachworld.com”.
As confirmed by the Registrar and evidenced in the case file, the disputed domain name <bleachworld.com> was initially registered in August 2004, and registered the Respondent on July 9, 2006. The disputed domain name <narutofan.com> was transferred to GoDaddy.com, Inc. in the name of the Respondent on February 26, 2006. The disputed domain name <narutofan.net> was registered to the Respondent since at least June 25, 2004.
5. Parties’ Contentions
Through its own extensive use, its parent company’s extensive use, and its interests as a licensee of its parent company’s trademark rights, the Complainant claims that it has substantial rights in the NARUTO and BLEACH trademarks that are infringed by registration of the disputed domain names. The Complainant says that the disputed domain names are identical and confusingly similar to the NARUTO and BLEACH trademarks. Each of the disputed domain names incorporates a trademark in its entirety with the addition of a generic term.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy which are illustrative of such rights or legitimate interests. The Respondent uses the disputed domain names to distribute unauthorized, unlicensed, pirated versions of the copyright-protected “Naruto” and “Bleach” anime and manga. For example, at “www.narutofan.com/multimedia/manga”, the Respondent brazenly declares, “everything is here for you completely free,” and offers for free download essentially the entirety of the “Naruto” manga series. The Respondent also distributes unauthorized downloads of “Naruto” anime, but charges a membership fee for these downloads. Similarly, at “bleachworld.com/multimedia/manga%20viewer” the Respondent offers a number of manga series for view or download, including but not limited to “Bleach”, and offers unauthorized downloads of “Bleach” anime for the price of a membership fee.
The Complainant claims that the disputed domain names were registered and have been used in bad faith by the Respondent. The Respondent’s use of the disputed domain names to distribute the Complainant’s and its parent’s copyrighted material without authorization demonstrates that the Respondent is aware of the Complainant. The Respondent’s conduct disrupts the Complainant’s business and is a form of bad faith listed in paragraph 4(b)(iii) of the Policy.
The Respondent says that, contrary to what is alleged in the Complaint, no membership fees have ever been charged in connection with the disputed domain names.
In relation to the first element of the Policy, the Respondent says that the relevant marks are registered in the name of Kabushiki Kaisha Shueisha TA Shueisha Inc. This is not the Complainant. The Respondent also states that there is nothing in the Complaint to show that Kabushiki Kaisha Shueisha is related to or the same company as Kabushiki Kaisha Shueisha TA Shueisha Inc. The Respondent says that the Complainant has not shown that it has any rights in the subject trademarks. Even if it is a licensee of the trademarks, the Respondent questions the scope of that license. The Respondent says that the Complainant appears to claim that it is an authorized reseller. An authorized reseller is not a trademark licensee as they are merely authorized to sell the trademark owner’s goods. The Respondent says that the Complainant therefore does not have “rights” in the marks for the purpose of paragraph 4(a)(i) of the Policy.
The Respondent also denies that the disputed domain names which include the word “fan” are identical or confusingly similar to the Complainant’s trademarks. The Respondent argues that the addition of the word “fan” means that the disputed domain names are not confusingly similar. The Respondent refers to Juventus Football Club AG v. Wu Ding, WIPO Case No. D2001-0565. In relation to the <bleachworld.com> domain name, the Respondent refers to Grand Bay Management Company v. Allegory Investments, WIPO Case No. D2001-0874. In that case the words “grand bay” was a registered trademark for hotels. The Respondent says that the panel found that the addition of the word “casino” to “grand bay” was sufficient to render the disputed domain names not confusingly similar to the then complainant’s mark.
The Respondent says that it has rights and legitimate interests in the disputed domain names, on the basis that they relate to the Respondent’s business. In this case, the Respondent has created an electronic community for its members to discuss and share information concerning the “Naruto” anime and manga series and the “Bleach” anime and manga series. This is not a case where the Respondent is trying to deceive visitors into believing that the website is the official website, and refers to information provided on its website under the “Information” link.
The Respondent says that its websites were operating on November 18, 2003 (for <narutofan.com>”) and October 21, 2004 (for <bleachworld.com>). The Complainant has sent the Respondent promotional material over the years to give away, the Complainant has granted the Respondent access to the Complainant’s media FTP drop=site for access to promotional materials and has kept the Respondent on its mailing list when promoting its products, so the Complainant has been well aware of the Respondent and its websites. The Respondent says that the significant amount of time of its websites’ operation and the Complainant’s knowledge of the Respondent’s websites all add significantly to the Respondent having rights and legitimate interests in the disputed domain names.
The Respondent says that it is using the disputed domain names in connection with a bona fide offering of goods or services, in particular the operation of an interactive website. The Respondent says that there are over 3 million users of its websites, and that the “www.narutofan.com” website is in the top 10,000 websites in the world and the “www bleachworld.com” website is in the top 200,000 websites in the world based on traffic. The Respondent also denies the Complainant’s allegations that it is infringing the Complainant’s copyright material, and says that the determination of this issue is beyond the scope of the Panel.
The Respondent says that it is commonly known by the disputed domain names, because of its use of those domain names in connection with its websites.
In relation to the allegations of bad faith against it, the Respondent says that the Complainant has based these claims on an allegation of infringement of copyright. The Respondent again says that this issue is beyond the remit of the Panel to determine. The Respondent says that, at the time it selected the disputed domain name1, it did so in connection with an electronic community for its members to discuss and share information. The Respondent is still using the disputed domain names for that purpose.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed as follows, immediately following a consideration of whether to admit the parties supplemental filings (i.e., those filed prior to the Panel order No. 1 on March 7, 2011).
A. Supplemental filings
As noted above, both the Complainant and Respondent made unsolicited supplemental filings. Neither the Policy nor the Rules explicitly provide for such supplemental filings. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules.
The Panel considers that such filings should not be admitted as a general rule, in accordance with the streamlined nature of the Policy. There was no sufficient cause for accepting the supplemental submissions in this case. The Panel considered that the Complaint and Response contained sufficient argument and evidence for the Panel to proceed to an informed decision. The supplemental filing of the Complainant sought only to counter legal arguments made by the Respondent. The Respondent’s supplemental submission was directed to legal arguments as to why the Complainant’s supplemental filing should not be accepted. A number of previous UDRP panel decisions indicate that supplemental filings should not be admitted where they simply respond to arguments raised by the other party. See, e.g., Piering Inc., v. Mudjackers, WIPO Case No. D2000-1525. Accordingly, as neither filing demonstrated sufficient cause to be admitted, the Panel did not consider the further filings in the consideration of the elements which follow.
B. Identical or Confusingly Similar
Rights in a mark
It is fundamental to establishing its case under paragraph 4(a)(i) of the Policy that a complainant sufficiently demonstrate that it “has rights” in a trademark or service mark. The Complainant claimed to be a licensee of its parent Shueisha with respect to BLEACH and NARUTO. However the Complaint initially provided little direct evidence to support this contention. The Complainant provided evidence only of marks for NARUTO registered in the name of its claimed licensor, Shueisha Inc.
Accordingly, on March 7, 2011, the Panel issued an order for the Complainant to provide such information, and allowing an opportunity for the Respondent to reply. On March 10, 2011, the Complainant provided a declaration of the Executive Director of Shueisha Inc., to confirm that the Complainant is a licensee of the NARUTO and BLEACH trademarks and supporting the Complainant’s case. The Complainant provided excerpts from the licenses agreements relating to the marks, which include signatures on behalf of both the Complainant and Shueisha Inc. The Complainant also provided evidence of a Statement of Use and Specimen from the United States Patent and Trademark Office (USPTO), submitted in connection with Shueisha Inc’s application to register the marks in that jurisdiction. That evidence indicates that the Complainant has an exclusive licence to the marks in that jurisdiction.
The Respondent claims that this evidence is insufficient to meet the requirement of the Policy for the Complainant to demonstrate that it ”has rights” in a relevant mark. In particular, the Respondent points out that the Statement of Use (evidenced in the Complainant’s response to the Panel Order) was signed by a Vice President of the Complainant on behalf of Shueisha, Inc. The Respondent says that this does not prove that the Vice President of the Complainant was authorized to sign on behalf of the Complainant. The Respondent also takes issue with the wording of licence agreements. The Respondent says that this wording does not indicate whether the Complainant has rights as a licensee of Shueisha, Inc’s trademarks or whether it has rights as a distributor of copyright materials.
The Panel has considered the evidence and arguments of both parties. The Panel finds that the Complainant’s evidence establishes that it sufficiently “has rights” in the marks for the purposes of paragraph 4(a)(i) of the Policy. The Respondent’s arguments to the contrary are not credible. For example, in its Response, the Respondent makes some play of the precise terminology of the name of the trademark registrant, Kabushiki Kaisha Shueisha TA Shueisha Inc., and Complainant’s references to being a licensee of “Kabushiki Kaisha Shueisha”. The totality of the evidence however makes it obvious that these entities are the same. The Respondent’s arguments in this respected suggest that it is grasping at straws.
Similarly, in its response to the Panel Order, the Respondent seeks to selectively identify apparent gaps or ambiguities in the Complainant’s further evidence to cast doubt on what the Complainant says that evidence establishes. However, the Panel considers that, taken together, the Complainant’s evidence compellingly establishes that it is an exclusive licensee of the NARUTO and BLEACH trademarks. The Respondent’s statements, that there is no evidence that the Complainant’s Vice President was authorized to sign on the Complainant’s behalf, are without merit. The usual position is that an executive officer of a company acts, in that capacity, as the agent of that company. The Respondent’s statements suggesting ambiguity in the nature of the Complainant’s license are also without merit. The Respondent’s submissions in that respect are contrary to the plain language of the declaration the Complainant provides. Among other things, that declaration by the Executive Officer of Shueisha states unambiguously that “Shueisha’s subsidiary VIZ Media, LLC (“Viz Media”) is a licensee of those trademarks.” It is well-established under the Policy that a licensee of a trademark owner can be a person who “has rights” for the purpose of paragraph 4(a)(i) of the Policy: see, e.g., DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939.
Identical or confusingly similar
The disputed domain names are plainly not identical to the marks in which the Complainant has rights. However, the Panel finds that they are confusingly similar for the purpose of paragraph 4(a)(i) of the Policy, for the following reasons.
Firstly, the disputed domain names wholly incorporate the Complainant’s marks and respectively incorporate the descriptive words “world” or “fans”. It is well-established that a domain name that wholly incorporates a trademark may be confusingly similar despite the addition of common or generic terms. See, e.g.,Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896.
Secondly, the Complainant has rights in registered marks which, as such, are entitled to a presumption of distinctiveness. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903. In addition, at least in an English market, the NARUTO mark may be an arbitrary or fanciful mark and therefore, on its face, is more likely to be inherently distinctive.
Thirdly, the terms added to the marks (“world” and “fans”) reinforce the mark. In each case, it is evident that the terms “world” and “fans” relate to the first term used in the domain names: NARUTO or BLEACH. As such, the generic terms do not distinguish those marks. Also, other recent cases under the Policy confirm that the addition of the word “fan” as the suffix of a domain name does not prevent a finding of confusing similarity: see, e.g., Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144 (regarding the domain name <chanelfans.com>); Steven Madden, Ltd. v. Eric Williams, WIPO Case No. D2009-0965 (regarding the domain name <stevemaddenfan.info>).
For these reasons, the Panel finds that the disputed domain names are confusingly similar to the marks in which the Complainant has rights.
As noted above, the Respondent resists such a conclusion by reference to cases such as Grand Bay Management Company v. Allegory Investments, WIPO Case No. D2001-0874. In that case the words “grand bay” was a registered trademark for hotels. However, that case was different to the circumstances in this case. In Grand Bay , supra, the panel found that the generic word added to the disputed domain name (casino) was the main focus of the domain name, and that the terms “grand bay” are used in many circumstances. This is not the case here. Here, it is the Complainant’s marks which are the main focus. They appear first in the disputed domain names. The Respondent itself has the Complainant’s business as its main focus – which is necessarily the case for a fan site.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish also that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Here, the Complainant has made out such a case against the Respondent by pointing to, for example, the nature of the Respondent’s websites and relevant prior decisions under the Policy.
In response, the Respondent argues that it has rights or legitimate interests on two bases. One is that the Respondent has established fan sites at the disputed domain names. The Respondent says that this demonstrates that it is making a bona fide offering of goods or services. Such an offering is an example of a right or legitimate interest under paragraph 4(c)(i) of the Policy. The second, and not mutually exclusive, argument is that the Respondent is now “commonly known” by the disputed domain names. Being commonly known in that way is a defense under paragraph 4(c)(ii) of the Policy.
Bona fide offering
There is no dispute in this case that the Respondent operates a type of “fan” website and makes offerings of information or products in that connection. Questions as to whether a fan website can give rise to rights or legitimate interests usually relate to whether a respondent is making a legitimate noncommercial or fair use, under paragraph 4(c)(iii) of the Policy. As such, the Center’s Index of UDRP Panel Decisions (at “http://www.wipo.int/amc/en/domains/search/legalindex.jsp”) provides references to previous cases dealing with the issue of fan sites under the heading “Fair Use and Free Speech”.
However, in this case, the Respondent claims that it is making a bona fide offering of goods and services for the purpose of paragraph 4(c)(i) of the Policy. Paragraph 4(c)(i) of the Policy relevantly provides that a respondent may demonstrate rights or legitimate interests in a disputed domain name if, before any notice of the dispute, the respondent shows its use of the domain name in connection with a bona fide offering of goods or services. As such, the Panel has considered the general question of whether the Respondent is making such an offering under paragraph 4(c)(i) of the Policy, rather than principles that might otherwise apply to a noncommercial “fan” website under paragraph 4(c)(iii) of the Policy.
By reference to cases such as Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Respondent appears to suggest that it acts as a type of legitimate distributor of the Complainant’s products. Namely, the Respondent says it is using the disputed domain names to provide interactive electronic communication services, allowing users to, e.g., post and view information; communicate with one another; search information; and provide links to related websites. The Respondent’s website offers downloads of the Complainant’s products. The Respondent says that its “www.narutofan.com” website is one of the top 10,000 sites in the world based on traffic, and that its websites have over 3,000,000 members. The Respondent says that it has provided these services since 2003 (in relation to “www.narutofan.com”) and 2004 (in relation to “www.bleachworld.com”).2
The Complainant says that the Respondent charges membership fees for these services, and claims that the Respondent distributes materials which infringe the Complainant’s copyright. The Respondent denies the allegation and claims that it is, in any case, beyond the scope of the Panel to determine. The Respondent says that, contrary to what is alleged in the Complaint, no membership fees have ever been charged in connection with the disputed domain names. The Panel observes that the Complainant’s evidence of the Respondent’s websites indicate that commercial products have been advertised on the sites. From this, the Panel has inferred that the websites do operate for some commercial gain. The websites also provide for member login and password details which, on its face, appear to support the Complainant’s contention that the sites operate for profit through charging membership fees.
What is a bona fide offering, for the purpose of paragraph 4(c)(i) of the Policy, depends on the circumstances of the particular case. In this case, the Panel finds that, in all the circumstances, the Respondent is not making a bona fide offering. The Respondent has referred for support to, e.g., Oki Data Americas Inc. v. ASD, Inc., supra. That is a well-cited case for determining whether an authorized reseller has rights in a disputed domain name. Accordingly, the Panel has had regard to the factors set out in that case for determining the legitimate interest of a reseller, in determining whether the Respondent has a right or legitimate interest in this case, as follows.
Firstly, there is no evidence that the Respondent is authorized by the Complainant, or the owner of the relevant marks. The Respondent made some claims that it received promotional material from the Complainant, but provides no evidence to support this contention. The Complainant also states that the Respondent has no such authorization.
Secondly, as noted in Oki Data Americas, supra, to be bona fide, the Respondent must actually be offering the goods or services at issue (referring to World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306). It is not in dispute that the Respondent is actually offering some services: including the provision of an online forum for its members. However, the Complainant has also alleged that the Respondent provides copyright-infringing materials. This calls into question whether the Respondent is actually offering legitimate products. The Respondent is correct in stating that it is beyond the remit of the Panel to make a determination as to whether or not there is copyright infringement.
Claims of copyright infringement have been raised in similar cases to this one, and prior UDRP panels have confirmed that it is strictly beyond the scope of the Policy to address these matters: see, e.g., Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144. But this does not mean that the Panel can ignore the allegation altogether. As noted above, the Complainant has made a prima facie case against the Respondent. The burden of production therefore shifts to the Respondent to demonstrate that it has rights or legitimate interests. As noted above, the Respondent’s website states that it provides various materials relating to the Complainant’s products for free. The Respondent however provides no evidence as to the legitimacy of its distribution of these products. The Panel considers this to be a significant omission in circumstances where the Complainant denies that it has authorized the Respondent and makes claims of copyright infringement. As noted in Chanel, supra, the lack of such an explanation points to a conclusion that the Respondent could not have any right or legitimate interest.
Thirdly, Oki Data Americas, supra, indicates that the Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods (referring to Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774; Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001). As noted above, there is an unresolved question as to whether the Respondent is offering legitimate products on its website. From evidence provided by the Complainant, it also appears that the Respondent has advertised products unrelated to the Complainant’s marks on its website.
Fourthly, Oki Data Americas, supra, states that the site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. (referring to, e.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211; R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201. The Respondent refers to a statement on its websites as to the nature of the products which it promotes. However, in this Panel’s opinion, that statement stops short of a transparent explanation of the Respondent’s relationship with the Complainant or the trademark owner.
The Panel notes that the evidence is not all one way in this case. While there has been some advertising of other products on the Respondent’s websites, the majority of those sites are directed to the subject matter of the “Bleach” or “Naruto” series. Further, the Respondent’s websites have been operating for a number of years, apparently unchallenged by the Complainant. However, as this Panel has discussed in other cases, a delay in bringing a complaint is not a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, WIPO Case No. D2010-2256.
The Respondent also argues that it has become “commonly known” by the disputed domain names. Relevantly, paragraph 4(c)(ii) of the Policy provides that a respondent may demonstrate rights or legitimate interests if the respondent has been commonly known by the disputed domain name. The Complainant states that the Respondent is not commonly known by the disputed domain names, and that the true Respondent is known as AniFreak Entertainment Ltd (which appears supported by the current appearance of the Respondent’s websites, which now link to websites at “www.anifreak.com”).
Here, the Respondent’s websites may suggest that it is at least known by the disputed domain names. The Respondent does not however provide substantial evidence that it has been “commonly known” in this way. The Respondent does not, e.g., provide evidence of other advertising, media recognition, or the extent of its sales under that name that might show that it is “commonly known” by the disputed domain names. Further, as this Panel has noted in previous cases, the registration and use of a disputed domain name, in connection with the Respondent’s website, does not by itself support a conclusion that the Respondent is commonly known by the domain names. Yakka Pty Ltd v. Mr. Paul Steinberg, WIPO Case No. D2004-0502. Were it otherwise, a respondent could rely on an intentional infringement to establish a right or legitimate interest – an outcome that is clearly contrary to the purpose of the Policy. For somewhat similar statements, see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy, and that the Respondent has not otherwise demonstrated to the satisfaction of the Panel rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
The third matter which the Complainant must provide is that the disputed domain name was registered and subsequently used in bad faith. As stated by the panel in Mandarin Oriental Services B.V. v Control Alt Delete, WIPO Case No. D2000-1671: “The essential question for the Panel is whether or not the Respondent registered the Domain Name with the Complainant specifically in mind.”
The Respondent denies registering the disputed domain names in bad faith, for much the same reasons it states that it has rights or legitimate interests in them. The Complainant says that the Respondent has demonstrated bad faith because the Respondent has registered the disputed domain names for the purpose of distributing copyright infringing materials.
On balance, and after carefully considering all the evidence submitted by the parties, the Panel finds in favor of the Complainant under this ground. There is no doubt that the Respondent was keenly aware of the marks in which the Complainant has rights when the disputed domain names were registered and then used. The Panel finds it more likely than not that the Respondent sought to leverage the trademark value of those marks to obtain a commercial benefit from traffic generated to its websites. The Respondent makes no claim that it operates the websites as a noncommercial “fair use”. This Panel would expect that the operation of a fan site for a commercial purpose would be supported by agreements with the trademark owner for that purpose. In this case, the Complainant denied there were any such agreements. Although intimating that it had been sent promotional material from the Complainant, the Respondent provided no evidence to support a finding that it was licensed or authorized by the Complainant or otherwise by the trademark owner.
In the Panel’s view, this evidence suggests that the Respondent has used the disputed domain names to attract Internet users in the way described in paragraph 4(b)(iv) of the Policy. That paragraph provides that there is evidence of bad faith where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark.
The Panel therefore finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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 names <bleachworld.com>, <narutofan.com> and <narutofan.net> be transferred to the Complainant.
James A. Barker
Dated: March 18, 2011