WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Square Enix Limited v. A Amir Abdulla
Case No. D2014-1483
1. The Parties
Complainant is Square Enix Limited of London United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Redd Solicitors LLP, UK.
Respondent is A Amir Abdulla of Manama, Bahrain.
2. The Domain Name and Registrar
The disputed domain name <justcause3.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2014. On August 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 30, 2014, 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.
On September 1, 2014 the Complainant forwarded to the Center a communication sent by Respondent. On September 1, 2014 the Center sent a communication to the Parties regarding a possible settlement. On September 3, 2014 the Complainant confirmed to the Center its intention to not suspend the proceedings.
On September 3, 2014 the Center received an informal communication from the Respondent.
On September 3, 2014 the Complainant emailed to the Center an Annex containing supplementary submissions. The Center replied to the Complainant on September 3, 2014 advising that the email and attached documents would be forwarded to the Panel for its consideration.
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 September 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2014. On September 5, 2014, the Center received an informal communication from the previous registrants of the Disputed Domain Name, advising that correspondence should not be directed to them. The Center replied on the same day, advising that the previous registrant’s email address had been removed from the case records.
On September 7, 2014 the Center received an informal communication from the Respondent. The Respondent did not submit any further response. Accordingly, the Center notified the commencement of the panel appointment process on September 26, 2014.
The Center appointed John Swinson as the sole panelist in this matter on October 7, 2014. 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 Square Enix Limited of the UK. Square Enix Limited is part of the Square Enix group of companies, who are publishers and developers of computer video games sold globally.
The Complainant holds a trade mark for JUST CAUSE which was registered on April 1, 2005 in the UK. The Complainant also holds three other trade marks for JUST CAUSE which were subsequently registered in other countries. For the purpose of this decision, these will be collectively referred to as the “Trade Mark”. The Complainant has provided evidence of these registrations.
The Complainant has also provided evidence of a number of other domain name registrations held by the Complainant which incorporate the Trade Mark.
The Respondent is an individual. The Respondent did not provide a formal response to the Complaint, so the Panel has little further information about him.
The Disputed Domain Name was created on May 6, 2008. The Complainant submits that the Respondent acquired the Disputed Domain Name on or around January 3, 2009. The Respondent stated in an informal communication that the Respondent had full ownership and control of the Disputed Domain Name from May 6, 2009. The Panel accepts that the Respondent acquired the Disputed Domain Name no later than May 6, 2009.
The website at the Disputed Domain Name is currently inactive. On previous occasions, the website has displayed a notice offering the Disputed Domain Name for sale, and a “link farm” page providing advertising links to categories of various goods and services, some of which were to goods or services that compete with those offered by the Complainant.
5. Parties’ Contentions
The Complainant makes the following submissions.
1. Identical or Confusingly Similar
The Complainant first used the Trade Mark at a trade show in May 2005. The Complainant’s first “Just Cause” computer game was released in September 2006. The game received significant media coverage and positive reviews from critics.
The only differences between the Trade Mark and the Disputed Domain Name are the absence of a space between the words (which is immaterial to a domain name) and the presence of the figure “3” at the end of the mark and before the suffix “.com”. The figure “3” will be understood by the public as meaning the third in a sequence of three JUST CAUSE trade marks, all of which would be associated with the “Just Cause” series of computer games.
The Complainant also made submissions and provided evidence in relation to the Complainant’s goodwill in the Trade Mark and unregistered or common law rights.
2. Rights or Legitimate Interests
The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
The Respondent does not host and, to the Complainant’s knowledge, has never hosted a legitimate website or online presence at the Disputed Domain Name. The Complainant is also not aware that the Respondent has ever been commonly known by the Disputed Domain Name.
Neither the Complainant nor any other company in the Square Enix group of companies has authorized the Respondent to use the Trade Mark or any other similar mark.
The Respondent is seeking to exploit the JUST CAUSE name and Trade Mark to create commercial gain.
3. Registered and Used in Bad Faith
The Respondent has not used the Disputed Domain Name other than to seek financial reward by attempting to sell the Disputed Domain Name for valuable consideration.
The Respondent has been using the Disputed Domain Name to intentionally attempt to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s Trade Mark.
The Respondent did not submit a formal Response to the Complainant’s contentions, but did provide an informal email communication addressing the Complaint. The email did not fully address the elements of the Policy.
1. Identical or Confusingly Similar
The Respondent noted the Complainant’s letter to a previous holder of the Disputed Domain Name annexed to the Complaint. In the Respondent’s words, the Complainant was “asking to change ownership due to “Attempt to attract internet users by creating a likelihood of confusion with Just Case [sic] trade mark”. This is an acknowledgement by the Complainant that the Disputed Domain Name is not identical but could only create confusion through the Complainant’s incorrect understanding.
The Respondent also submits that the Complainant’s Trade Mark is JUST CAUSE, which is two words, while “justcause3” in the Disputed Domain Name is only one word.
2. Other Comments
The Respondent made the following further submissions in relation to the Complaint:
- The Complainant should be asking the holder of every domain name which starts with “Just Cause” to transfer ownership to the Complainant.
- There is an active website at the domain name <justcause1.com>, which is not held by the Complainant. The Complainant has not raised a Complaint in relation to this domain name causing confusion with its Trade Mark.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Procedural Issues
1. Informal Response
A Response must comply with a number of formal requirements, as set out in paragraph 5(b) of the Rules. The Respondent’s email submissions fail to conform to these requirements. Importantly, the Respondent’s email does not certify that the information contained in the Response is to the best of the Respondent's knowledge complete and accurate, that the Response is not being presented for any improper purpose, and that the assertions in the Response are warranted under the Rules and applicable law (see paragraph 5(b)(viii) of the Rules).
The Panel has discretion to accept a deficient response under paragraph 10(a) of the Rules. However, previous panels have been reluctant to accept a deficient response where the deficiency results from the omission of the certification required under paragraph 5(b)(viii) of the Rules (see, e.g., NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984 and the cases cited therein).
Given the absence of certification as required under paragraph 5(b)(viii) of the Rules, the Panel finds that it is not appropriate to accept the Respondent’s submissions. In any event, the Panel wishes to note that even if it had considered the Respondent’s submissions, this would not have changed the outcome of the case as the Respondent’s submissions do not properly clarify or provide insight into any material aspects of the dispute.
2. Complainant’s Supplementary Filing
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and page limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings “with due expedition” and gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, panels will only accept supplementary filings in “exceptional” circumstances.
The supplementary material provided by the Complainant via email provides further evidence to support the Complaint but this evidence is not material to the outcome. Accordingly, the Panel also declines to accept this material as part of the record in this proceeding.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is a combination of the Complainant’s Trade Mark and the number “3”. Users may interpret the “3” as representing the third “Just Cause” computer game in the series developed by the Complainant.
The Panel finds that the Trade Mark is the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as “3”) to a trade mark does not prevent confusing similarity (see, e.g., Paris Hilton v. Turvill Consultants, WIPO Case No. D2012-0965 and the cases cited therein).
In the Panel’s view, the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. There is currently no active website at the Disputed Domain Name, and historical searches of the content hosted at the Disputed Domain Name show (at different times) an offer to sell the Disputed Domain Name and pay-per-click websites featuring links to goods and services, some of which were competitive with those offered by the Complainant1 .
- The Respondent has not been commonly known by the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent is currently passively holding the Disputed Domain Name. The Respondent’s asking price for transfer of the Disputed Domain Name to the Complainant (see further below) is far in excess of out-of-pocket expenses in relation to the Disputed Domain Name.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Paragraph 4(b)(i) of the Policy provides that bad faith can be evidenced where there are “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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly associated to the domain name”. This provision also requires that the Respondent has knowledge of the Complainant and of the Trade Mark, given that this provision applies in case of acquisition primarily for a sale (or another transaction) to the Complainant or to a competitor of the Complainant.
In the Panel’s view, the Respondent must have registered the Disputed Domain Name with knowledge of the Complainant, its “Just Cause” computer game, and it’s Trade Mark. The Panel reaches this view in light of:
- the fact that the Respondent acquired the Disputed Domain Name in 2009, approximately 4 years after the Complainant first used the Trade Mark and at least 2 years after the Complainant released the first “Just Cause” computer game;
- the reputation of the Complainant and its computer games; and
- the fact that the Disputed Domain Name incorporates the Complainant’s Trade Mark in its entirety.
The website hosted at the Disputed Domain Name has previously provided notice that the Disputed Domain Name was for sale, as well as a facility for interested parties to make an offer to purchase the Disputed Domain Name. The Complainant (through an agent) made a number of monetary offers to the Respondent to purchase the Disputed Domain Name. The Complainant summarized this interaction neatly in the Complaint:
“On December 18, 2013, the Complainant’s agent made an offer to the Respondent to buy the Disputed Domain Name for USD 100. In response, on December 24, 2013, the Respondent counter-offered to sell the Disputed Domain Name for USD 10,000, stating that he had “previously received higher offers”.
The Complainant’s agent increased their offer to USD 2,000 on January 9, 2014. However, the Respondent increased his counter offer to USD 15,000 on January 12, 2014.
The Complainant’s agent once again increased their offer to USD 3,000 on January.13, 2014. The Respondent merely repeated his counter offer of USD 15,000, stating that it was his “final offer”, on January 13 2014.
On January 14, 2014, the Complainant’s agent repeated the offer of USD 3,000, explaining to the Respondent that “we are willing to offer you $3,000.00 for the domain, please agree, otherwise our client Square Enix Limited who has legal rights to the domain, will have no choice but to file legal actions.” The Respondent did not move from his counter offer of USD 15,000, repeating that it was his final offer. The negotiations were taken no further.”
Out-of-pocket costs include the costs of obtaining, registering, and maintaining a domain name. This issue of "excessive" out-of-pocket costs is considered on a case-by-case basis. In the Panel’s experience, USD 15,000, would greatly exceed the Respondent’s out-of-pocket costs for the Disputed Domain Name.
Additionally, the Panel finds that the Respondent’s bad faith is further evidenced by its previous use of the website at the Disputed Domain Name. The Panel has reviewed historical records which show that the Disputed Doman Name has also previously hosted a “link farm” website of advertisements offering various products which are similar to the products offered by the Complainant, and which claim to be related to “justcause3”. It can be reasonably inferred that the Respondent has profited (or attempted to profit) from the website through “click-through revenue”. As such, the Panel is of the opinion that the Respondent has previously used the Disputed Domain Name to intentionally attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (see paragraph 4(b)(iv) of the Policy).
In light of the above (and in the absence of any meaningful submissions to the contrary from the Respondent), the Panel finds no conceivable legitimate or bona fide use of the Disputed Domain Name by the Respondent.
The Panel finds that the Complainant has succeeded on the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <justcause3.com> be transferred to the Complainant.
Date: October 21, 2014
1 The Panel has conducted independent research, as it is entitled to (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).