ADMINISTRATIVE PANEL DECISION
Hiroyuki Nishimura v. Contact Privacy Inc. Customer 0111730701 / Jim Watkins, Race Queen, Inc
Case No. D2016-1025
1. The Parties
The Complainant is Hiroyuki Nishimura of Tokyo, Japan, represented by Shiba International Law Offices, Japan.
The Respondent is Contact Privacy Inc. Customer 0111730701 of Toronto, Ontario, Canada / Jim Watkins, Race Queen, Inc of Makati, Manila, the Philippines, represented by Aoki, Sekine & Tanaka, Japan.
2. The Domain Name and Registrar
The disputed domain name <2ch.net> (“Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2016. On May 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 24, 2016, 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 May 24, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 27, 2016.
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 May 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2016. The due date for Response was extended to June 24, 2016, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on June 24, 2016. The Complainant submitted an unsolicited supplemental filing on June 27, 2016. The Center received a communication from the Respondent on June 28, 2016. The Complainant submitted a further supplemental filing on June 28, 2016, and a further communication was transmitted by the Respondent on June 29, 2016. By email dated July 15, 2016, the Respondent requested that it be advised by the Panel should it decide to admit the Complainant’s unsolicited supplemental filing.
The Center appointed Gabriela Kennedy, Frederick M. Abbott and Andrew F. Christie as panelists in this matter on July 14, 2016. The Panel finds that it was properly constituted. Each member of 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. Preliminary Matter: Admissibility of Supplemental Filings
As stated in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
After having considered both supplemental filings by the Complainant and the Respondent’s communications in reply, the Panel finds that neither raises any additional evidence or arguments outside of what could have been submitted in the Complaint. The Panel will therefore not accept the Complainant’s unsolicited supplemental filings and will determine the case based solely on the Complaint and the Response.
5. Factual Background
The Complainant is an individual based in Japan. He holds registered rights in the 2CH trademark in Japan, which was registered on April 22, 2016 for “textboard” services in connection with online chat and information.
The Respondent is based in the Philippines, and acquired the Disputed Domain Name on May 3, 2012. The Disputed Domain Name resolves to a website in Japanese that offers online bulletin board services.
6. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
(a) The Disputed Domain Name is identical to the Complainant’s 2CH trademark that was first registered by the Complainant in Japan on April 22, 2016.
(b) The Complainant has been the legitimate owner of the “2ch.net” business since 1999.
(c) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never transferred, licensed or granted any rights to the Respondent to use the Disputed Domain Name.
(d) The Japan Patent Office issued an opinion that the Complainant had greatly contributed to making 2CH a well-known mark from 1999 until the date of its trademark application.
(e) The Respondent is using the well-known 2CH trademark in the Disputed Domain Name in order to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s 2CH trademark, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent’s submissions can be summarized as follows:
(a) The Complainant divested all rights in the Disputed Domain Name and 2CH trademark.
(b) The Respondent acquired the Disputed Domain Name on May 3, 2012, and has been operating the associated website in good faith since that date.
(c) The Complainant does not have trademark rights in 2CH.NET. Any rights that the Complainant may have are not exclusive to the Complainant, and it does not entitle the Complainant to own the Disputed Domain Name or to operate the related business.
(d) The Complainant did not submit any evidence to demonstrate that the Complainant is a legitimate owner of the “2ch.net” business, as alleged by the Complainant. Even if the Complainant has registered rights in the 2CH trademark in Japan, this does not mean that the Complainant is the legitimate owner of the “2ch” or “2ch.net” business.
(e) Before any notice of the dispute, the Respondent had been using the Disputed Domain Name in connection with a bona fide offering of services. The Respondent uses the Disputed Domain Name to operate a bulletin board system in Japan, known as “2channel”. The Respondent began using the Disputed Domain Name more than four years prior to the registration of the Complainant’s 2CH trademark in Japan.
(f) The Respondent’s company, Race Queen, Inc. operates a legitimate business, and is a registered corporate member of the Canadian Chamber of Commerce of the Philippines.
(g) The Respondent has not registered or used the Disputed Domain Name in bad faith. The Complainant only acquired registered rights in the 2CH trademark on April 22, 2016, which is four years after the Respondent acquired the Disputed Domain Name. The Respondent, therefore, could not have known of the Complainant’s registered trademark rights. The Complainant has also failed to submit any evidence of bad faith use on the part of the Respondent, and has not made any submissions on how the Respondent is alleged to have been using the Disputed Domain Name to target the Complainant. The Respondent is using the Disputed Domain Name as part of its legitimate “2channel” business, and so cannot be said to have been using it to create confusion amongst Internet users with the Complainant’s mark.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the 2CH trademark on the basis of its trademark registration in Japan, registered on April 22, 2016.
It is well-established that when making an enquiry as to whether or not a trademark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension, in this case “.net”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D20060762).
The Panel accordingly finds that the Disputed Domain Name is identical to the Complainant’s 2CH mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.
Although the burden on the Complainant to establish a prima facie case is “relatively light”, the Complainant has not provided any evidence to establish that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name (Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0158). The Complainant makes a bare allegation in his Complaint that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant also asserts that he has never transferred, licensed or granted any rights to use the 2CH trademark to the Respondent, and that he is a legitimate owner of the “2ch.net” business since 1999. No evidence has been provided by the Complainant to establish that it has been operating any business relating to the 2CH trademark or the Disputed Domain Name, or that the Complainant acquired rights in relation to them before the Respondent.
The Complainant claims that the Japan Patent Office “admitted in its opinion that the Complainant has greatly contributed to making ‘2ch’ well-known mark during the period from 1999 until the date of the application of ‘2ch’ mark [sic]”. However, the Panel cannot find any evidence to support this claim amongst the documents submitted by the Complainant.
The Disputed Domain Name has been used by the Respondent in relation to the “2channel” business, which is a bulletin board system in Japan, operated by the Respondent. The Respondent acquired the Disputed Domain Name and began operating it a number of years before the Complainant obtained his registered rights in the 2CH trademark, upon which the Complainant is basing his claim.
For the foregoing reasons, on the information in the case record before it, the Panel is of the opinion that the Respondent’s use of the Disputed Domain Name constitutes legitimate use under the Policy. The Panel accordingly finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
Even if the Complainant’s supplemental filings were taken into account, the Panel would still conclude that the Complainant had failed to satisfy paragraph 4(a)(ii) of the Policy. Whilst there may be a possibility that the Respondent is holding the Disputed Domain Name on behalf of the Complainant, and the Complainant “entrusted” the Respondent to operate the “2channel” business on behalf of the Complainant, insufficient evidence has been provided. The email dated April 30, 2012, which was provided by the Complainant as part of his supplemental filings, merely states that the Respondent agreed to “change this to what you want, after this ordeal is over”. It is not clear what such agreed change was, and the email provides no concrete evidence of the alleged business arrangement between the Parties regarding the Disputed Domain Name.
The Panel finds it prudent to note that the Policy is intended to handle cases of cybersquatting. Any potential business dispute between the Parties may be more appropriately addressed through court proceedings rather than through the Policy.
C. Registered and Used in Bad Faith
In light of the Panel’s finding under the second limb, the Panel need not consider whether or not the Disputed Domain Name was registered and is being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Andrew F. Christie
Date: July 28, 2016