FUNimation Entertainment v. VerionMedia / Hicham Derion
Claim Number: FA1008001340440
PARTIES
Complainant is FUNimation Entertainment (“Complainant”), represented by Evan Stone, Texas, USA. Respondent is VerionMedia / Hicham Derion (“Respondent”), represented by Zak Muscovitch, of The Muscovitch Law Firm, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <watch-onepiece.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2010.
On August 13, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <watch-onepiece.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@watch-onepiece.com. Also on August 24, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 13, 2010.
On September 24, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
On September 28, 2010, the Panel requested a further statement from the Complainant by October 12, 2010 and extended the deadline for its decision until further notice.
On October 12, 2010, the Complainant submitted its further statement. The Respondent submitted its reply to this further statement on October 13, 2010.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
According to the Complainant, the trademark ONE PIECE was filed with the USPTO on September 22, 2003, registered on July 15, 2008 and first used in commerce on March 1, 2006. The mark was filed by Kabushiki Kaisha Shueisha, publishers of the “One Piece” comics in Japan. The intellectual property was subsequently licensed to another company, Tōei Kabushiki-gaisha for creation of the animated series based on the comics.
The Complainant states that, in April of 2007, Tōei granted to the Complainant the rights to distribute the series. And it states that it is the exclusive U.S. distributor of the animated motion picture series “One Piece”.
The Complainant alleges that the Respondent has no legitimate interest in the domain name and that the domain is not being used in connection with a bona fide offering of goods or services. No assignment, license or other agreement exists between the Respondent and the Complainant, Shueisha or Tōei for use of the ONE PIECE mark. The Respondent has never been known by the domain name and has not acquired rights in the mark—the domain was registered exclusively for the unlawful distribution of the animated series and has never served a legitimate noncommercial use or use that would be considered fair use under copyright, trademark or common law.
Further, according to the Complainant, the website at the disputed domain name is being used in extremely bad faith, as it is primarily used for the unlawful distribution of the animated motion picture series “One Piece”. Moreover, this is in direct competition with the Complainant’s official “One Piece” website, which can be found at <www.onepieceofficial.com>.
The Complainant alleges that, by incorporating its mark into the disputed domain name, verbatim, the Respondent has created an extremely high risk of consumer confusion as well as the disruption of its business. The Internet traffic to the Respondent’s illegal website now out-ranks traffic to the Complainant’s legitimate website by a factor of 14-to-1. As evinced by the numerous advertisements on the Respondent’s site, the Respondent is clearly profiting from these unlawful activities, none of which could be classified as fair use under the Copyright Act, Lanham Act or common law, nor which serve any legitimate, noncommercial purpose. The only purpose of this site is to exploit the Complainant’s intellectual property.
The Complainant states that it has sent numerous notices of copyright infringement, as recently as October of 2009. Every notice has been ignored by the Respondent.
B. Respondent
The Respondent alleges that the nature of the Distribution Agreement between Tōei and the Complainant was limited in scope and authority. Furthermore, there was no assignment or license of any trademark rights whatsoever by Toei to the Complainant, anywhere in the Distribution Agreement. Accordingly, Toei retained all trademark rights that it possessed in ONE PIECE, if any, and provided no authority to the Complainant to enforce Toei’s trademark rights, if any.
Further, states the Respondent, the single trademark relied upon by the Complainant is a United States registered trademark, registered on July 15, 2008 to Kabushiki Kaisha Shueisha TA Shueisha Inc. The Complainant has not presented any evidence to support its assertion that Shueisha licensed its trademark to Toei. As far as the evidence which has been filed by the Complainant is concerned, Shueisha remains the sole owner of the trademark without any assignment or licenses to anybody, Toei or the Complainant in particular.
The Respondent alleges that he is a 21 year-old individual resident of the Netherlands, who carries on under the name “VerionMedia”, which is a name that is unregistered and which he made up. He is a fan of the animated series, “One Piece”. He registered the disputed domain name in October 2007 and immediately started using it to provide links for fans to watch “One Piece” on the Internet.
According to the Respondent, the links that are listed on the website at the disputed domain name are links to third-party web sites that host “One Piece” episodes. None of the episodes are in fact hosted by the Respondent; they have all been uploaded by unknown third parties to various websites on the Internet. The Respondent locates such third-party websites using Google and other search engines, and publishes the link to those episodes on his website. As such, the Respondent’s website is a directory of third-party links to “One Piece” episodes created and hosted by third-parties which are unrelated and unknown to the Respondent. The Respondent does not himself reproduce, copy, or host any episodes of “One Piece”. His website contains a suitable disclaimer.
The Respondent states that, accordingly, although it is admittedly a somewhat complex issue (and is beyond the scope of this UDRP proceeding), he has not himself infringed upon any copyright in “One Piece” that may be held by the copyright owner, which is apparently either Toei or Shueisha, and that if copyright infringement has occurred, it would be by third parties which the Respondent does not know and which are unaffiliated with the Respondent. As such, any copyright notices would be properly sent to such third parties. In any event, the Respondent never received any such notices from the Complainant, and the Complainant has not produced same into evidence.
The Respondent alleges that, from the outset, he has consistently used the disputed domain name in association with a website relevant to the descriptive nature of that domain name. Indeed the Respondent’s website has become very popular because many visitors initially find it by using Google with the descriptive search term “watch one piece”.
The Respondent readily concedes the Complainant’s allegation that the disputed domain name and associated website have become very popular through three years of use by the Respondent, and acknowledges that the domain name and associated website has become well known such that it is identified with the services provided by the Respondent, namely access through the Internet to “One Piece” episodes.
The Respondents states that he does not charge visitors to his website for access to the website. He does have some advertisements on the website and the minimal revenue from these advertisements primarily go to paying for the upkeep and maintenance of the website.
The Respondent states:
Pursuant to Paragraph 4(a)(i) of the Policy, in order for a domain name dispute to be subject to the UDRP, the Respondent’s Domain Name must be “identical or confusingly similar to a trademark or service mark in which the Complainant has rights”. [emphasis added] The Complainant in this case has not demonstrated that it has any trademark rights whatsoever. … there is not a scintilla of evidence that the Shueisha trademark was assigned or licensed to Toei, let alone the Complainant
Furthermore, even assuming that the Shueisha Trademark was assigned or licensed to Toei, the Distribution Agreement does not even assign or license the Shueisha Trademark to the Complainant at all. This is a mere limited distribution agreement wherein Toei (who is not even the Shueisha Trademark owner), agrees to appoint the Complainant to identify and engage potential distributors of the One Piece animated series who will contract directly with Toei, not the Complainant. Nowhere are trademark rights assigned or licensed, or even mentioned.
The Respondent cites case law under the Policy to the effect that in most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the UDRP. But where a Complainant claims that it has rights in a mark owned by someone else, the Complainant must provide clear evidence that it has been conveyed such rights by contract.
According to the Respondent, in the present case, there is no evidence of any trademark license conferred by the Distribution Agreement or otherwise, nor is the Complainant a related company to the Shueisha trademark owner. Moreover, there is no evidence that the Complainant’s transfer request is being done under any authority granted by the Shueisha trademark owner. Accordingly, it must be assumed that the trademark holder alone has reserved such rights for itself.
The Respondent cites precedents under the Policy to the effect that where a Complainant who itself is not the trademark owner, fails to establish that it was conferred trademark rights by contract and has the authority to enforce such trademark rights, the Complaint shall be dismissed because the Complainant has not met its burden of proof under Paragraph 4(a) of the Policy, and the Panel need not proceed with consideration of any further facts or arguments presented in the matter.
The Respondent alleges that he has a legitimate interest in the disputed domain name because he is accurately describing what he is offering, i.e. ‘watching One Piece’. There is no other way for the Respondent to describe what he is offering other than through this fair use of the ONE PIECE mark. The Respondent cites precedents under the Policy to support his position.
The Respondent notes that the Complainant alleges that the Respondent’s website “is being used for the unlawful distribution of our animated motion picture series One Piece”, and that the Respondent’s website is in “direct competition with our official site”.
In reply, the Respondent states that he is not infringing upon the copyright held by Toei or Shueisha. The Respondent has not reproduced nor distributed any episodes of “One Piece”. As aforesaid, the Respondent’s website provides a directory of publically accessible links to third party web sites which are unaffiliated with the Respondent and are produced by parties unknown to the Respondent. The Respondent has always believed that his actions were lawful as he was not himself infringing anyone’s copyright, but merely providing an index of links in a similar manner to numerous other sites including Google and Yahoo. In any event, the issues of whether copyright infringement has been committed by third parties, or even by the Respondent, which is denied, is a complex issue and beyond the scope of the UDRP.
Further, the Respondent says that he did not register a name that easily lends itself to confusion with the Shueisha Trademark, such as <onepiece.com>. The latter domain name, in contrast, would more readily suggest an affiliation with the Shueisha trademark owner, and would be a far more likely candidate for cybersquatting. In the present case, the Respondent registered a domain name which descriptively and accurately described the services being presented, and even took care to expressly disclaim any affiliation. The Respondent did not select a domain name which unfairly interfered with the Complainant’s trademark rights. Accordingly, it is respectfully submitted that the dispute between the parties is not really a domain name dispute which properly lends itself to resolution via the Policy. Rather, this dispute is multifaceted and its overarching nature is that of alleged copyright infringement. Such a dispute is far beyond the scope of the Policy.
C. Additional Submissions
In reply to the Panel’s request for a further statement, the Complainant states that Toei acquired rights to produce animated versions of “One Piece” from the original creator (Shueisha) of the “One Piece” comic series. Toei granted the US distribution rights to a third party and those rights were subsequently acquired by the Complainant.
The Complainant further alleges that the Respondent is infringing US copyright laws, so his use of the disputed domain name cannot be considered to be in good faith, nor can he be considered as having legitimate rights in the disputed domain name.
The Complainant submits a document in Japanese and a sworn statement by an independent translator stating that the agreement in question contains language effecting a grant of rights from the original creator (Shueisha) to Toei to create and distribute an animated series based on the “One Piece” property as well as rights to use the ONE PIECE mark. The effective date of the agreement is from 1999 through 2015 with the extension. Additionally this agreement contains language granting Toei the right to sublicense the aforementioned rights internationally to third parties such as the Complainant.
In response to the Complainant’s further statement, the Respondent states that the Complainant has failed to provide evidence that it was granted rights in the US registered trademark ONE PIECE, and this despite having been given a second opportunity to do so.
The Respondent reiterates that the Panel should not transfer the disputed domain name to the Complainant, because it has not proven that it has rights in the registered US trademark ONE PIECE.
Further, the Respondent states that the copyright infringement issues raised by the Complainant are not valid and in any care are irrelevant for this proceeding.
FINDINGS
The Complainant has been licensed to distribute an animated series called “One Piece”. That series is well-know and widely followed.
The Respondent used the web site at the disputed domain name to offer links to sites hosting unauthorized copies of episodes of the series “One Piece”.
The Respondent derived revenue from the sponsored links on both version of his web site.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The ONE PIECE mark was registered with the United States Patent and Trademark Office (“USPTO”) by Kabushiki Kaisha Sheuisha. The rights to the ONE PIECE mark were subsequently licensed to another party, Tōei Kabushiki-gaisha, for creation of the animated series, ONE PIECE, based on the comics produced by trademark owner Kabushiki Kaisha Sheuisha. The Complainant now has rights in the ONE PIECE mark because in April of 2007, Tōei granted to the Complainant rights to distribute the animated series through the year 2012. The Panel finds that the Complainant is a licensee and/or distributor of the trademark owner and accordingly has rights to the ONE PIECE mark pursuant to Policy ¶ 4(a)(i). See Stevenson v. Crossley, FA 1028240 (Nat. Arb. Forum Aug. 22, 2007) (“Per the annexed U.S.P.T.O. certificates of registration, assignments and license agreement executed on May 30, 1997, Complainants have shown that they have rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark holder, or as a licensee. The Panel concludes that Complainants have established rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i).”).
As the Respondent correctly points out, pursuant to case law under the UDRP, in most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the UDRP, see for example Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions D2003-0624 (WIPO, Oct. 16, 2004).
The Respondent alleges that the Complainant has not submitted clear evidence that it is a licensee and that it acquired rights in the US registered trademark ONE PIECE. But the Panel finds that the Complainant has submitted sufficient evidence to establish that it has valid rights to distribute the “One Piece” animated series and, consequently, has rights in the mark ONE PIECE. At a minimum, the Complainant has common law rights in that mark.
It is obvious that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s ONE PIECE mark because it combines the mark with the descriptive word “watch,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
The Panel holds that the Complainant has satisfied its burden of proof for this element of the Policy.
The Respondent cites a case under the Policy where the Panel held that the domain name and the name of respondent's web site "MercedesShop" were descriptive of the business conducted there. In conducting that business, said the panel, “it would be difficult, if not impossible for Respondent to avoid altogether the use of the word 'Mercedes’…which is the normal term which, to the public at large, signify Complainant's cars”. But that case must be distinguished from the present case, because in that case the respondent’s activities were perfectly legal, whereas in the present case the Respondent’s website would appear to be associated with infringement of copyright laws.
The Panel notes that the Respondent denies that there is any copyright infringement and denies that he is responsible of any possible infringement. The Panel does not accept these assertions. It would appear, prima facie, that copyright infringement is indeed taking place and it would appear that the Respondent, at a minimum, condones such infringement. As the Respondent correctly points out, the matter of copyright infringement is beyond the scope of the present proceeding. It is not, however, out of the scope of this Panel to evaluate the Respondent’s use of the disputed domain name, because the Respondent invokes that very use in order to argue that he has a legitimate interest in the disputed domain name.
The Respondent cites Viacom International, Inc. v. Domains by Proxy, Inc. / Max Fret, WIPO Case No. D2008-2001, to support his position that copyright infringement issues are obviously outside the scope of the Policy. But he fails to note that, in that case, the panel found that the domain name at issue was clearly not confusingly similar to any trademarks or service marks asserted by the complainant. Such is not the case here, where the disputed domain name is clearly confusingly similar to the Complainant’s mark. That is, the panel in the cited case found that, absent confusing similarity between the domain name and the complainant’s mark, it was not empowered to consider the matter further. That is entirely different from the present case.
The Respondent cites United States court cases to the effect that “nominative use” of trademarks is generally permitted. He does this in order to argue that he has a legitimate interest in the disputed domain name. But the question of whether or not the Respondent’s use of the mark ONE PIECE violates US trademark law is not a matter for this Panel to consider or even determine. This Panel need only determine whether the Respondent has rights or legitimate interests in the disputed domain name in the sense of the Policy. The Panel finds that such is not the case, because, for the reasons given below, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Indeed the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a “bona fide” offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for that particular website, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be “bona fide”.
The Respondent’s links to unauthorized distributions of Complainant’s animated series potentially competes with Complainant’s distribution of the series and therefore does not comport with Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Respondent alleges that he did not select a domain name which unfairly interfered with the Complainant’s trademark rights. But he freely admits that he selected the disputed domain name in order to attract to his website Internet users who wish to watch episodes of “One Piece”. And he freely admits that he derives revenue from advertisements hosted on his web site. And he freely admits that his website had become very popular and likely diverted users from the Complainant’s website.
There can be no doubt that Internet users are likely to be confused regarding the source or affiliation of the Respondent’s website, and this despite the Disclaimer which is found on the site. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
Thus, the Panel finds that the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website. This constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Respondent argues that it has a disclaimer on its website. But that disclaimer does not mitigate the finding of bad faith under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <watch-onepiece.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 15, 2010
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