1. The Parties The Complainant is Konami Corporation of Tokyo, Japan, represented by CSC Digital Brand Services, Australia.
The Respondent is “-”, David Nervil of Jamaica, New York, United States of America.
2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2013. On May 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant information for the Domain Name which differed from the named Respondent in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 21, 2013.
On May 17, 2013, the Center received an email communication from David Nervil, the Administrative and Technical Contact of the registrant of the Domain Name which is recorded as “-” in the WhoIs database. On the same date, the Center sent an email communication to the parties inviting the Complainant to submit a request for suspension. On May 21, 2013, the Complainant submitted a suspension request and the Center subsequently suspended the proceeding on the same date. On May 22 and 23, 2013, the Center received further email communications from David Nervil. On June 12, 2013, the Complainant requested that the proceeding be re-instituted. The Center re-instituted the proceeding on June 12, 2013.
The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2013. On June 23, 2013, the Center received an email communication from David Nervil. On June 25, 2013, the Center requested David Nervil to indicate whether his email communication was the Respondent’s complete Response. No further email communication or Response was received. Accordingly, the Center informed the parties of the commencement of the panel appointment process on July 4, 2013.
The Center appointed Ian Lowe as the sole panelist in this matter on July 10, 2013. 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.
Since the name of the registrant of the Domain Name is recorded simply as “-”, but communications to the registrant have been responded to by David Nervil, the Administrative and Technical Contact whose address is given as the same address as “-”, the Panel intends to treat “-” and David Nervil as the Respondent to this Complaint.
4. Factual Background The Complainant was established in 1969 and is listed on the Tokyo, London and New York stock exchanges. It is a global developer, publisher and manufacturer of a range of electronic entertainment products and systems including gaming machines, amusement arcade machines and card games. It has a worldwide network of companies in the United States, Europe, Asia, Australia and Japan.
The Complainant is the registered proprietor of numerous trademarks comprising KONAMI in countries including the United States, Japan, Canada, Korea, China and Indonesia as well as European Community trademarks. These include United States trademark KONAMI No. 1244685 registered on July 5, 1983 and Community trademark KONAMI No. 317735 registered as of July 19, 1996. The Complainant and its associate companies are also the registrants of numerous domain names comprising “konami” such as , and .
Yu-Gi-Oh! Is a card game developed and published by the Complainant.
The Domain Name was registered on September 10, 2009 but, according to the Registrar’s verification response, the Domain Name was registered to the Respondent on July 22, 2012. At the date of the Complaint, the Domain Name resolved to an English language website offering links in relation to the
Yu-Gi-Oh! world championships, passwords, forums and downloads (the “Website”). The Website claimed on its home page to be “a site made in the USA for the Yu-Gi-Oh! World Championship DS Wi-Fi entertainment!”.
5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its KONAMI trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. Respondent As noted above, the Respondent did not file a formal response to the Complaint. However, David Nervil did send a number of emails to the Center in response to the Complaint and to subsequent notifications by the Center. Although the argument in those emails is not entirely clear, the Panel has attempted to take into account the representations apparently made in those emails. The emails were dated May 17, 22 and 23 and June 23, 2013.
In response to the email on May 17, 2013 from the Center, notifying the Complainant that, according to the Registrar, the name of the registrant was not David Nervil, but “-”, David Nervil wrote to the Center:
“So I’m not the person that replies to admittedly withdrawn the rights/administrative of the domain name “konamiworldchampionship.com”? Now I’ve think we’ve got a problem Acknowledge the fact that I’m not disputing releasing “konamiworldchampionship.com”. I am simply not fighting back, whether it should be removed by the person that files the complaint to be so.
Site Administrative: David Nervil.”
In subsequent emails, David Nervil stated that the use of the Domain Name was not misleading and that the content of the Website at the Domain Name related to Konami sponsored activities or to what may be products of the Complainant such as “the Yugioh yearly released title ‘World Championship’”. He pointed out that the Website stated that it was a “free repository on all aspects of the Yu-Gi-Oh! franchise”. The Respondent denies that the Domain Name is being used in bad faith.
6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Leaving aside the “.com” suffix, that may be ignored when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the Domain Name comprises the entirety of the Complainant’s KONAMI trademark together with the non-distinctive expression “world championship”.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the trademark KONAMI in which the Complainant has rights.
The Complainant asserts that the Respondent has no licence or permission to use the KONAMI trademark and that it is not an authorized dealer in the Complainant’s products. In any event, the Respondent is not simply dealing in the Complainant’s products on the Website but rather appears to be offering a range of products and services related to Yu-Gi-Oh!, one of the Complainant’s products. The Panel notes that these commercial elements of the Website are inconsistent with a finding of rights or legitimate interests on the basis of a fan site (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.5). Furthermore, there does not appear to be any suggestion that there is in fact a Konami World Championship, reflecting the Domain Name, and it is not clear to the Panel from the submissions from the Parties what the Yu-Gi-Oh! world championship may be. In either event, the Respondent has not explained, either in a Response or in his emails to the Center, how he might have rights or legitimate interests in respect of the Domain Name.
The Panel considers that the Complainant has made out a primafacie case that the Respondent has no such rights or legitimate interests and the Respondent has not come forward with any rebuttal of that case. On the contrary, in his first email dated May 17, 2013, as set out above, David Nervil appeared to concede that he was not entitled to the Domain Name and indicated that he was prepared to give it up.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
In the Panel’s view, it is clear from the Respondent’s emails that he accepts that he had the Complainant in mind when he registered or otherwise acquired the Domain Name and that the “Konami” element of the Domain Name is intended to refer to the Complainant. He equally makes clear that visitors to the Website are intended to be drawn there by the use of the KONAMI mark. He appears to be doing so for commercial reasons, without the authority of the Complainant. The Panel also considers that there is a likelihood that visitors to the Website would be confused into believing that it was an official website of the Complainant or that it was associated with the Complainant or authorized by it. In the view of the Panel, the fact that the Website features a product of the Complainant does not negate the fact that the Domain Name is being used in bad faith.
As pointed out above, in his first email to the Center, the Respondent appeared to concede that the Domain Name should be surrendered.
In the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 be transferred to the Complainant.