FUNimation Entertainment v. mohamed chennani
Claim Number: FA1311001529907
Complainant is FUNimation Entertainment (“Complainant”), represented by Evan Stone of Stone & Vaughan, PLLC, Texas, USA. Respondent is mohamed chennani (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <attack-on-titan.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2013; the National Arbitration Forum received payment on November 14, 2013.
On November 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <attack-on-titan.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2013 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@attack-on-titan.com. Also on November 19, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 asserts trademark rights in ATTACK ON TITAN.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. In 2009 a Japanese business, Kodansha Ltd (‘Kodansha’), first published a manga animated film series by the name, ATTACK ON TITAN (‘the trademark’).
2. In early 2013 Kodansha gave a territorially limited license to Complainant to use the trademark in connection with the animated films.
3. Application Serial No. 86120811 for registration of the trademark (‘the trademark application’) was filed in the name of Kodansha with the United States Patent and Trademark Office on November 16, 2013. It is pending registration.
4. Complainant asserts continuous use of the mark since 2009.
5. The disputed domain name was registered on May 22, 2013.
6. The domain name resolves to a website where episodes of animated films seemingly produced by Kodansha can be downloaded.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
The first matter for consideration arises because Complainant is not the owner of the trademark. It is a licensee for certain territories. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition asks at paragraph 1.8: Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case? In its answer to that question it notes 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 trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants”.
Annexed to the Complaint is what has been described as an excerpt from the license agreement between Kodansha and Complainant. It is a simple, single page document which appears more to Panel as a separate document broadly outlining the scope of the license. Contrary to Complainant’s assertion, there is no mention of an exclusive license given to Complainant. Some UDRP panels have required a UDRP complainant not being the trademark owner to be at least an exclusive licensee of the relevant trademark. Panel here need not explore that requirement further for reasons which follow and proceeds on the basis that Complainant is entitled to bring these Administrative Proceedings in its own name.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Although a trademark registered with a national authority is evidence of trademark rights it is open, equally, to Complainant to show unregistered or common law trademark rights acquired through use and reputation of the trademark.
Complainant has not presented evidence that it has any relevant trademark registration. Kodansha is the applicant of a pending application before the USPTO. Prior to registration, the trademark application gives no rights for the purposes of paragraph 4(a)(i) of the Policy.
Complainant makes no direct claim to common law trademark rights, either for its part or on the part of Kodansha. It points to use of the trademark in Japan since 2009 and use in the United States since 2012/2013. Panel can properly infer a claim to unregistered trademark rights.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, asks at paragraph 1.7: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? In answer, the consensus view of former UDRP panelists is that:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
In terms of the requirements just outlined, the evidence submitted with the Complaint is lacking detail and substance. Complainant provides almost no evidence of a reputation in the trademark associated with Kodansha. Articles submitted refer to use in Japan since 2009/2010 but given no precise exposure or market presence of the trademark. They refer to the animation series in language such as “a sleeper hit” and “hottest new manga in years.” No other details are given.
Use by Complainant is equally lacking in detail. The 2013 license agreement shows only that Complaint has the right to exploit 25 episodes of the animated series. An annexed articled from “Anime News” dated April 2013 refers to the deal struck between Kodansha and Complainant and states that Complainant “has begun streaming the first of 25 episodes to subscribers”. Further material annexed to the Complaint are November 2013 screenshots from the “Hulu” and “CrunchyRoll” video hosting websites referring to the ATTACK ON TITAN series available to stream online. Reference is made to season 1 of the series comprising 26 weekly episodes. Panel deduces that approximately 6 months prior viewing is available. In terms of how the Policy has been consistently applied, this material falls far short of what would be required to show common law rights in the trademark (see, for example, Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Panel finds that Complainant has not shown that it has unregistered trademark rights and so has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required.
No findings required.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the < attack-on-titan.com > domain name REMAIN with Respondent.
Debrett G. Lyons, Panelist
Dated: December 18, 2013
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