World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bandai Co., Ltd v. Nebula Explorer and Mr. Jan Roosch / WhoisGuard

Case No. D2011-1761

1. The Parties

The Complainant is Bandai Co., Ltd of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of great Britain and Northern Ireland.

The Respondents are Nebula Explorer and Mr. Jan Roosch of Netherlands and WhoisGuard, WhoisGuard Protected, of Los Angeles, California United States of America.

2. The Domain Name and Registrar

The disputed domain name <carddass.com> (“Domain Name”) is registered with eNom (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2011. On October 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 17, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 19, 2011 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 October 20, 2011. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2011. A part from the two emails of October 10, 2011 and October 21, 2011no formal Response was filed.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 7, 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.

4. Factual Background

The Complainant is a Japanese company that produces toys, games, and digital entertainment products, many of them associated with children’s anime series of television programs and graphic books. Since 1988, the Complainant has produced and operated vending machines in Japan that sell anime trading cards, which are collected and used in games. Both the vending machines and the cards (which are also sold outside Japan) are branded with the coined name カードダス, variously transliterated into the Latin alphabet as CARDDAS or CARDDASS. The Complainant operates a related website in Japanese, with some brands and labels in English, at “www.carddas.com”. Both versions of the mark, CARDDAS and CARDDASS, appear on that website.

The Complainant or its subsidiarieshold several trademark registrations for CARDDASS and CARDDAS, including the following word marks:

MARK

JURISDICTION

REG. NUMBER

REG. DATE

CARDDASS

Benelux

503535

May 6, 1992

CARDDASS

Japan

3334933

July 25, 1997

CARDDASS

CTM

005300769

Aug. 16, 2007

CARDDAS

CTM

002151538

June 26, 2002

The Domain Name was registered on May 18, 2005, in the name of the Respondent Whois Guard, a domain privacy service. After receiving notice of this dispute, eNom identified the Respondent Nebula Explorer as the registrant. It is not known whether Nebula Explorer is a legal entity. Mr. Roosch of the Netherlands corresponded with the Complainant’s representative in October 2011 in connection with this dispute and has exchanged emails with the Center as well. Mr. Roosch identified himself as the person who registered the Domain Name and asked for payment of a fee to transfer it to the Complainant. The parties did not agree to the terms of transferring the Domain Name, and this proceeding followed.

As shown in screen shots furnished with the Complaint, in October 2011 the Domain Name resolved to a home page reproducing the Complainant’s CARDDASS design mark and corporate logo and featuring links to several CARDDASS fan and trading websites. The home page of the website associated with the Domain Name indicated that the page was started in June 2005 to present “as many card trading related pages as possible”. The linked websites, chiefly European, included not only fan comments and card trading platforms but also offers to sell books, videos, and a variety of products largely but not exclusively related to Japanese anime. Following correspondence with the Complainant’s representative, the Respondent took down the website associated with the Domain Name. The Domain Name currently appears to redirect to the Complainant’s website at “www.carddas.com”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical or confusingly similar to its marks, and that the Respondents have no rights or legitimate interests in the Domain Name. The Complainants infer that the Domain Name was registered and used in bad faith, to attract Internet users for commercial gain or to sell the Domain Name to the Complainant or its competitors for an amount in excess of reasonable out-of-pocket costs.

B. Respondent

The Respondent Whois Guard has expressed no interest in this proceeding, and there is no information in the record concerning the Respondent Nebula Explorer. Mr. Roosch has asserted his interests in the Domain Name in correspondence with the Complainant and the Center, and for purposes of this decision the Respondent Nebula Explorer will be treated as his alter ego. Thus, “the Respondent” will refer henceforth to Nebula Explorer and Mr. Roosch.

Mr. Roosch sent an email to the Center on October 21, 2011 denying bad faith and stating he had received no “commercial benefits” from the Domain Name. He said that he would “look for legal support.” However, no Response has been submitted in the proceeding, and the Respondent’s remarks were not accompanied by the certification of accuracy and completeness required by the Rules, paragraph 5(b)(viii). The Panel will take account of the Respondent’s communication, but the lack of a full and formal Response and certification inevitably has a negative impact on the Panel’s understanding of the Respondent’s position and the Panel’s assessment of the credibility of the Respondent’s assertions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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.

Under paragraph 15(a) of the Rules:

“A Panel shall decide a complaint 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.”

A. Identical or Confusingly Similar

The Complainant holds CARDDASS and CARDDAS as registered trademarks. The material portion of the Domain Name, setting aside the “.com” address suffix for Policy purposes, is identical to the former and confusingly similar to the latter (differing only in the single as opposed to double “s”).

The Panel concludes that the first element of the Complaint has been established.

B. Rights or Legitimate Interests

It is undisputed that the Respondent did not have the Complainant’s permission to register a Domain Name identical to the Complainant’s registered and highly distinctive trademark. The Policy, paragraph 4(c), lists nonexclusive circumstances under which a respondent could nevertheless demonstrate rights or legitimate interests in a domain name, including:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

None of these instances squarely fits the Respondent’s use of the Domain Name over the past six years. There is no indication in the record that the Respondent has been known by a name corresponding to the Domain Name. Mr. Roosch characterizes himself as a CARDDASS fan, but the website associated with the Domain Name was not strictly a noncommercial fan site. It featured links to selected trading websites, where sales and trades were made. While the use of the Domain Name does not appear to qualify as “a legitimate noncommercial fair use” of the Domain Name, it also does not appear from the record that the Respondent itself had a business plan for using the Domain Name “in connection with a bona fide offering of goods or services”.

The card traders linked from the Respondent’s former website might be viewed as resellers, and there are UDRP decisions treating resellers as having a legitimate interest in the nominative use of a domain name referring to a trademarked product. However, there is no evidence in the record that the Respondent itself acted as a reseller and used the Domain Name to resell the Complainant’s products. In any event, the UDRP decisions on resellers typically require a clear statement of relationship with the mark holder and limit the use of the domain name exclusively to commerce involving the trademarked products. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.3, and decisions cited therein.) That was not the case with the website associated with the Domain Name, which displayed the Complainant’s marks without identifying the Respondent, while the linked websites offered products of third parties as well as of the Complainant.

The Respondent’s statements in correspondence suggest that the Respondent’s intention was to preserve the Domain Name on behalf of the Complainant (but not at the Complainant’s request) and eventually transfer the Domain Name to the Complainant in exchange for a service fee. This purpose does not constitute a “right or legitimate interest” in a Domain Name identical to a trademark held by another, as discussed further below in connection with the third element of the Complaint, bad faith.

The Panel concludes on the present record that the Complaint sufficiently establishes that the Respondents have no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following on which the Complaint relies:

“(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

“(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.”

Mr. Roosch indicated in correspondence with the Complainant and the Center that he is a fan of Bandai and CARDDASS and intended to hold the Domain Name to keep it from falling into “less faithful hands”, for which he believed the Complainant should be grateful. In correspondence with the Complainant, Mr. Roosch said he always intended to transfer the Domain Name “when asked” and would do so for a service fee of USD 1500, which appears to be an amount substantially in excess of normal domain name registration costs even over a period of six years. Mr. Roosch denied obtaining commercial benefit from the Domain Name in the interim, but it appears from the links that formerly appeared on the website associated with the Domain Name that at least some of them involved commercial activity in reselling the Complainant’s cards and also selling goods produced by other firms.

Based on the record in this proceeding, including the Respondent’s own statements in correspondence, the Panel finds that:

(a) the Respondent had actual knowledge of the Complainants’ marks (in both versions, with the double and single “s”) and, in fact, copied the Complainant’s double “s” word and design marks on the website formerly associated with the Domain Name;

(b) the Respondent selected and used a Domain Name identical to the Respondent’s well-established, coined mark and used it to direct Internet users to websites dealing with the Complainant’s products and also those of third parties;

(c) the Respondent planned to sell the Domain Name to the Complainant, and contemplated receiving a fee in excess of documented or likely domain name registration expenses.

Even accepting the Respondent’s uncertified statements to the effect that Mr. Roosch did not believe he was infringing the Complainant’s intellectual property rights and felt he was simply doing the Complainant a favor in preserving the Domain Name from unfriendly interests,the Panel finds no basis in the Policy or relevant trademark law to recognize the “friendly” but unauthorized appropriation of a trademark for a domain name as a good faith use of the mark, particularly when the party expects to be paid for this service. The Panel concludes that the registration and use of the Domain Name reflect bad faith registration and use within the meaning of the Policy.

7. Decision

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, <carddass.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Dated: December 12, 2011

 

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