Toei Animation Co., Ltd. v. Jeff Green / SpeedyWebz
Claim Number: FA2101001929303
Complainant is Toei Animation Co., Ltd. (“Complainant”), represented by Stone & Vaughan, PLLC, Texas, USA. Respondent is Jeff Green / SpeedyWebz (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sailormoontv.com>, registered with CloudFlare, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2021; the Forum received payment on January 21, 2021.
On January 22, 2021, CloudFlare, Inc. confirmed by e-mail to the Forum that the <sailormoontv.com> domain name is registered with CloudFlare, Inc. and that Respondent is the current registrant of the name. CloudFlare, Inc. has verified that Respondent is bound by the CloudFlare, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2021 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@sailormoontv.com. Also on January 28, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the SAILOR MOON mark in conjunction with inter alia the production and distribution of DVDs featuring animation and music as well as pre-recorded DVDs featuring animated entertainment . Complainant has rights in the SAILOR MOON mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,096,041, registered December 6, 2016). See Compl. Ex. A. Complainant’s mark lists a first use fate in commerce as November 11, 2014, but also claims that the mark has been in use since at least 1992.
Respondent’s <sailormoontv.com> domain name is identical or confusingly similar to Complainant’s SAILOR MOON mark as it merely adds the additional term “TV” to Complainant’s mark. Respondent lacks rights and legitimate interests in the <sailormoontv.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the SAILOR MOON mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to violate Complainant’s copyright rights.
Respondent registered and uses the <sailormoontv.com> domain name in bad faith. Respondent uses the disputed domain name to violate Complainant’s copyright rights.
B. Respondent
The Respondent failed to respond to this proceeding. The Panel notes that the <sailormoontv.com> domain name was registered on April 30, 2015. See Compl. Ex. C.
1. Complainant owns a trademark registration with the United States Patent and Trademark Office (USPTO) for the mark SAILOR MOON (Reg. No. 5,096,041) registered on December 6, 2016 having a first use date of November 11, 2014. Complaint’s mark is used in connection with “DVD’s featuring animation, music; visual recordings and audio visual recordings featuring music and animation; pre-recorded DVDs featuring animated entertainment; downloadable audio and video recordings featuring animation.” See Compl. at Ex. A.
2. Complainant’s first use of the mark predates the Respondent’s registration of the disputed domain name <sailormoontv.com>, which was registered by Respondent on May 1, 2015. See Compl. at Ex. C..
3. The disputed domain names are identical or confusingly similar to the SAILOR MOON mark.
4. Complainant has not licensed or otherwise authorized Respondent to use its mark, nor is Respondent commonly known by the mark.
5. Complainant has established that the disputed domain names have been registered and used in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the SAILOR MOON mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 5,096,041, registered December 6, 2016). See Compl. Ex. A. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration, the Panel finds Complainant has demonstrated rights in the SAILOR MOON mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <sailormoontv.com> is identical or confusingly similar to Complainant’s SAILOR MOON mark as it merely adds the additional term “TV” to Complainant’s mark. The addition of a descriptive term and a generic top level domain fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent lacks rights or legitimate interests in the <sailormoontv.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the SAILOR MOON mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the disputed domain name lists the registrants as “Jeff Green/ SpeedyWebz,” with an address in Canada. There is no evidence to suggest that Respondent was authorized to use the SAILOR MOON mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <sailormoontv.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, it alleges that Respondent uses the disputed domain name to violate Complainant’s copyright rights by making Complainant’s copyrighted material available for streaming or download. Using a disputed domain name for illegal activity may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Here, Complainant provides a screenshot of what then existed on Respondent’s website, which not only provided a “Sailor Moon Watching Guide”, but also made available the actual episodes of Complainant’s television show for streaming. The fact that there is no evidence in the record that establishes Respondent’s right to make such content available for viewing by end users, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Although the Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”).
The Panel finds that Respondent had actual knowledge of Complainant’s mark prior to registering the domain name. This is clear from Respondent’s decision to make available Complainant’s exact content through the disputed domain name that shares the name of such content. See Twentieth Century Fox Film Corporation v. Meridha enterprise / Md. Meraz Hossain, FA1306001504724 (Forum July 16, 2013) (“Complainant finally contends that Respondent had knowledge of Complainant’s mark prior to registering the domain name. Complainant contends that this is obvious from Respondent’s decision to promote the exact types of sports programs (e.g., National Football League games) as Complainant provides. …The Panel conclude that the record provides a basis for finding that Respondent registered and used the domain names with actual knowledge of Complainant’s marks in an act of Policy ¶ 4(a)(iii) bad faith.”).
Complainant contends Respondent registered and uses the <sailormoontv.com> domain name in bad faith by using disputed domain name to violate Complainant’s copyright rights. At the time the UDRP complaint was submitted, Respondent’s disputed domain name featured unauthorized copies of Complainant’s television show. Rather than sending users to those places where users could purchase authorized copies of the content, Respondent chose to make that content available to its users without authorization. Previous panels have concluded that engaging is such activity is akin to competing with the Complainant. See Disney Enterprises, Inc. v. Personal, FA101200136170 (Forum Dec. 31, 2010) (“Respondent’s disputed domain resolves to a website that features unauthorized copies of movies marketed under Complainant’s DISNEY mark. The Panel therefore concludes that Respondent is acting as a competitor of Complainant. Internet users may view or download movies from the website resolving from Respondent’s disputed domain name rather than purchasing these movies from Complainant or its authorized retailers. Therefore, the Panel determines that Respondent’s registration and use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).”).
In addition, using a disputed domain name in connection with illegal activity can be evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1703001721606 (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith). Here, Complainant argues Respondent uses the disputed domain name for the purpose of unlawfully distributing/performing Complainant’s Sailor Moon television show in clear violation of Complainant’s copyright rights.
For all of the reasons above, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sailormoontv.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: March 3, 2021
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