WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FC2, Inc. v. Host Master, 1337 Services LLC
Case No. D2019-2669
1. The Parties
The Complainant is FC2, Inc., United States of America (“United States”), represented by DSA Legal Solutions, United States.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <fc2nl.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2019. On October 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 12, 2019, 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 November 14, 2019.
The Center verified that the Complaint, together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2019.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on December 30, 2019. 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, FC2, Inc., is a web hosting service company incorporated in the United States. Established since 1999, the Complainant has been providing various services to users, including providing spaces for users to upload videos so that users can make profits. It is the 11th most popular website in Japan overall (as of January 2018).
The Complainant owns worldwide registrations of FC2 trademark, including No. 4964857 Japan trademark, registered on June 30, 2006; No. 5046126 the United States trademark, registered on September 20, 2016; No. 1275290 International trademark, registered on March 16, 2015, which designates European Union and the Republic of Korea;
and registrations of trademark (the “Logo”), including No. 5046147 the United States trademark March 16, 2015, registered on September 20, 2016; No. 1275291 International trademark, registered on, which designates Singapore and the Republic of Korea.
According to the information disclosed by the Registrar, the Respondent is Host Master, 1337 Services LLC. The disputed domain name was registered on March 10, 2019. According to the Complaint, the disputed domain name resolves to a website with adult content, where the Complainant’s FC2 and Logo trademarks are displayed.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its FC2 trademark.
The Complaint further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The term “fc2” is an arbitrary term which has no meaning outside its use as means to identify the Complainant as a source of certain products and services. The Respondent is not a licensee of the Complainant nor is the Respondent authorized to use the Complainant’s FC2 and Logo trademarks. Further, the Respondent is not commonly known as “fc2nl.com”.
The Complainant’s FC2 and Logo trademarks are used on the website associated with the disputed domain name, which deceives Internet users into believing that the disputed domain name is related to the Complainant or owned and operated by the Complainant. The Complainant’s website consists of a list of videos which are uploaded by the Complainant’s users. The Complainant’s users pay for uploading those videos and other users download them by purchase. However, the website associated with the disputed domain name provides those paid videos for a charge to Internet users. It does not require payment directly to Internet users who the Respondent calls them “members”. Instead, the website requires Internet users to become members and the members are required to donate points. The members need to purchase (donate) points and use them in order to download the paid videos illegally on the website. The members go to the “donation” page by clicking “donation” of the menu bar. Though it states “donation”, it does not mean real donation, but payment for downloading the videos from the website. The members will pay (donate) by bitcoin or event points using Jubet 24 casino company so the members can get points to download videos on the website. Such conduct serves the purpose of generating revenue, and it also destroys the good reputation of the Complainant among users who upload those videos. Moreover, it reduces the Complainant’s revenues because the website pretends to be related to the Complainant, or owned and operated by the Complainant.
The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the owner of numerous registrations of the FC2 trademark, which predate the registration date of the disputed domain name (March 10, 2019). The Complainant has successfully established its rights upon the trademark.
It is well established that “.com” as a generic Top-Level Domain (“gTLD”) suffix is disregarded in the assessment of the similarity between the disputed domain name and the Complainant’s trademark.
The disputed domain name <fc2nl.com> incorporates the Complainant’s FC2 trademark in its entirety with two additional letters “n” and “l” after the trademark. UDRP jurisprudence has established that incorporation of a complainant’s trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark. Moreover, the additional letters “n” and “l” do not prevent the finding of confusing similarity between the disputed domain name and the Complainant’s FC2 trademark. See Inter IKEA Systems B.V. v. Franklin Lavall?e / IkeaCuisine.net, WIPO Case No.D2015-2042, and Pet Plan Ltd v. Nicholas Plagge / SeniorTours Vacations, WIPO Case No. D2015-1691.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s FC2 trademark.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See Construction Skills Certification Scheme Limited v. Mara Figueira, WIPO Case No. D2010-0947.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered on March 10, 2019, years later than the registration date of the Complainant’s FC2 trademark. Moreover, according to the Complainant’s evidence, the Panel observes that the disputed domain name resolves to a website displaying the
Complainant’s FC2 and Logo trademarks. Thus, the Panel holds that the Respondent must have awareness of the Complainant and its trademark and/or services at the time of registering the disputed domain name. Without any rights or legitimate interests, the Respondent’s registration of the disputed domain name is indicative of bad faith.
The Panel further observes that the website associated with the disputed domain name provides similar services to the Complainant’s. The Respondent’s use of the Complainant’s trademarks on the associated website could cause confusion to Internet users. Moreover, there is a commercial banner related to a third party on the associated website. Thus, the Panel finds that the Respondent has the intention to attract, for commercial gain, Internet users to the associated website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its websites or location or of products and services. See Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011. Thus, the bad faith evident in the registration and use of the disputed domain name can be established under paragraph 4(b)(iv) of the Policy.
For the reasons above, the Panel concludes that the Respondent registered and is using the disputed
domain name in bad faith.
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 <fc2nl.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Date: January 14, 2020