ESPN, Inc. v. Jun Morikami
Claim Number: FA1712001763798
Complainant is ESPN, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Jun Morikami (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <espnplus.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2017; the Forum received payment on December 20, 2017. The Complainant was submitted in both Japanese and English.
On December 21, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <espnplus.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 December 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in Japanese and English, setting a deadline of January 17, 2018 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@espnplus.com. Also on December 28, 2017, the Japanese and English 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 January 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, ESPN, Inc., owns ESPN, a global sports television channel that offers sports coverage 24 hours per day. Complainant launched the network in 1979 using the ESPN mark. Complainant also uses the ESPN PLUS mark in conjunction with its business practices. Complainant established rights in its ESPN and ESPN PLUS marks (“ESPN marks”) through registration with the United States Patent and Trademark Office (“USPTO”) (ESPN mark- e.g., Reg. No. 1,345,096, registered June 25, 1985; ESPN PLUS mark– Reg. No. 2,218,679, registered Jan. 19, 1999). See Amend. Compl. Annexes 4–6. Additionally, Complainant registered the ESPN mark with the Japan Patent Office (“JPO”). See Amend. Compl. Annex 7. Respondent’s <espnplus.com> domain name is identical to Complainant’s ESPN PLUS mark because it merely appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
ii) Respondent does not have rights or legitimate interests in the <espnplus.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its ESPN mark in any fashion. Respondent is not commonly known by the disputed domain name as the WHOIS information of record lists “Jun Morikami” as the registrant. See Amend. Compl. Annex 16. Respondent is not using the <espnplus.com> domain name in connection with any bona fide offerings of goods or services, or legitimate noncommercial or fair use of the domain. Instead, the disputed domain name resolves to an inactive website.
iii) Respondent registered and is using the <espnplus.com> domain name in bad faith. Respondent registered the domain name to prevent Complainant from registering the domain name, which reflects Complainant’s ESPN PLUS trademark. Respondent also failed to actively use the domain name as the <espnplus.com> domain name resolves to an inactive website.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered the <espnplus.com> domain name on April 15, 2014. See Amend. Compl. Annex 16.
Complainant established that it had rights in the marks contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends it registered its ESPN marks with USPTO (ESPN mark- Reg. No. 1,345,096, registered June 25, 1985; ESPN PLUS mark– Reg. No. 2,218,679, registered Jan. 19, 1999). See Amend. Compl. Annexes 4–5. Additionally, Complainant claims it registered the ESPN mark with JPO. See Amend. Compl. Annex 7. Registration of a mark with a trademark authority, such as USPTO or JPO, confers rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”); National Academy of Recording Arts & Sciences, Inc..com v. Xserver XSERVER Inc. / XSERVER Inc., FA 1695259 (Forum Nov. 7, 2016) (affirming complainant’s rights in a mark that had been registered to it under the Japan Patent Office). Therefore, the Panel concludes that Complainant has established rights in the ESPN marks pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <espnplus.com> domain name is identical to Complainant’s ESPN PLUS mark because it simply appends the gTLD “.com” to the fully incorporated mark. The appendage of a gTLD does not differentiate between a mark and a disputed domain name. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). As such, the Panel holds that Respondent’s <espnplus.com> domain name is identical to Complainant’s ESPN PLUS mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its ESPN marks in any fashion. Absent affirmative evidence in the record that a respondent was authorized to use a complainant’s mark or is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <espnplus.com> lists “Jun Morikami” as the registrant. See Amend. Compl. Annex 16. Therefore, the Panel concludes that Respondent is not commonly known by the <espnplus.com> domain name.
Further, Complainant contends that Respondent is not using the <espnplus.com> domain name in connection with any bona fide offerings of goods or services, or legitimate noncommercial or fair use of the domain. Complainant argues that the domain name resolves to an inactive website. See Amend. Compl. Annex 17. Use of a disputed domain name to resolve to an inactive website may indicate a respondent’s failure to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant alleges that screenshots of the <espnplus.com> domain name’s resolving website show that the site resolves to an error page displaying the message, “This page cannot be displayed.” See Amend. Compl. Annex 17. Accordingly, the Panel finds that Respondent failed to make an active use of the disputed domain name and holds that Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant asserts that Respondent registered and is using the <espnplus.com> domain name in bad faith by preventing Complainant from registering the domain name, which reflects Complainant’s ESPN PLUS trademark. Use of a domain name to prevent a complainant from reflecting its mark in an identical domain name may be considered bad faith. See Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent registered the <toshibastrata.com> domain name to prevent the complainant from reflecting the TOSHIBA and STRATA marks in a corresponding domain name). Complainant asserts that it recently announced that it will be launching a new streaming service in the Spring of 2018 and rebooting the ESPN PLUS brand for this purpose. See Amend. Compl. Annexes 13–15. Complainant further alleges that Respondent registered the <espnplus.com> domain name in response to this announcement to prevent Complainant from registering the domain name. As such, the Panel finds that Respondent registered the <espnplus.com> domain name to prevent Complainant from registering a domain name that reflects its mark and holds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(ii).
Finally, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because Respondent failed to actively use the <espnplus.com> domain name. See Amend. Compl. Annex 17. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant, ESPN, Inc., owns ESPN, a global sports television channel that offers sports coverage 24 hours per day. Complainant launched the network in 1979 using the ESPN mark. Complainant also uses the ESPN PLUS mark in conjunction with its business practices. As such, Complainant’s marks 'ESPN' and 'ESPN PLUS' are considered as being well-known and reputable trademarks, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Therefore, the Panel finds that Respondent failed to actively use the <espnplus.com> domain name and holds that Respondent engaged in bad faith registration and use pursuant to 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 <espnplus.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 22, 2018
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