WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FC2, Inc. v. David Chan

Case No. D2020-3375

1. The Parties

The Complainant is FC2, Inc., United States of America, represented by Vondst Advocaten, the Netherlands.

The Respondent is David Chan, Canada.

2. The Domain Name and Registrar

The disputed domain name <fc2zip.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 December 15, 2020, 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 December 20, 2020.

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 December 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 28, 2021. 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, established in 1999, provides video hosting and other web-based services in Japanese and other languages. The Complainant holds International trademark registration number 1275290 for FC2, and International trademark registration number 1275291 for a figurative mark (the “unicorn mark”), both registered on March 16, 2015, both designating multiple jurisdictions, and both specifying services in classes 38, 41, 42 and 45, including streaming of video material, including live video and user-generated video content, on the Internet. Those trademark registrations remain current. The Complainant has also registered “fc2” in domain names in multiple Top-Level Domains (“TLDs”), including <fc2.com>, which is used in connection with a website providing hosting and other services.

The Respondent is an individual resident in Canada.

The disputed domain name was registered on September 2, 2018. It resolves to a website in Japanese that offers “FREE FC2 CONTENT”. The website prominently displays the unicorn mark and offers for free videos originally uploaded to the Complainant’s “www.fc2.com” website, linking them to third party advertising.

The Registrar confirmed that the language of the Registration Agreement is English.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s FC2 trademark. It consists of the FC2 mark, to which a generic word “zip” and the generic TLD “.com” are added.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant and the Complainant has not given any permission to the Respondent, neither for the use of the disputed domain name, nor for the use of its figurative trademark.

The disputed domain name was registered and is being used in bad faith. The Respondent registered and is using the disputed domain name primarily to profit from and exploit the Complainant’s “FC2” trademark. The Respondent is using the disputed domain name to mislead Internet users into thinking that the Respondent’s website is related to the Complainant, or owned and operated by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the FC2 mark.

The disputed domain name wholly incorporates the FC2 mark as its initial element. It also incorporates the dictionary word “zip” but, as a mere dictionary word, this does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The FC2 mark is clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The only other additional element in the disputed domain name is a generic TLD suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The disputed domain name wholly incorporates the Complainant’s FC2 trademark as its initial element and resolves to a website offering “FREE FC2 CONTENT”. The website prominently displays the Complainant’s unicorn mark and offers content uploaded to the Complainant’s website, giving the impression that it is affiliated with the Complainant. However, the Complainant submits that the Respondent is not affiliated with the Complainant and the Complainant has not given any permission to the Respondent, either to use the disputed domain name or to use the unicorn mark. Accordingly, the Panel does not consider this use of the domain name to be in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent is identified by the Registrar as “David Chan”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

The Respondent’s website monetizes video content by linking it to third party advertising. This use is for the commercial benefit of the Respondent, or the third party advertisers, or both. Accordingly, the Panel does not consider this to be a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy either.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”

The disputed domain name was registered in 2018, years after the Complainant obtained its trademark registration for FC2. The disputed domain name wholly incorporates the FC2 mark as its initial element. The Respondent’s website prominently displays the Complainant’s unicorn mark and offers “FREE FC2 CONTENT”, i.e., video content from the Complainant’s website. These circumstances indicate that the Respondent knew of the Complainant and its FC2 trademark at the time that he registered the disputed domain name and that he targeted them.

The Respondent uses the disputed domain name in connection with a website offering “FREE FC2 CONTENT”, which prominently displays the Complainant’s unicorn mark. The disputed domain name combines the FC2 mark with the word “zip”, which refers to an archive file format that supports data compression, while the website monetizes the video content from the Complainant’s website by linking it to third party advertising. In view of these circumstances and the findings in Section 6B above, the Panel considers that the disputed domain name was intended to attract Internet users by creating a likelihood of confusion with the Complainant’s FC2 trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the videos offered on that website within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 <fc2zip.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 9, 2021