Viz Media, LLC v. Maxime Barbel / demonslayer-world
Claim Number: FA2106001952566
Complainant is Viz Media, LLC (“Complainant”), represented by Evan Stone of Stone & Vaughan, PLLC, Texas, USA. Respondent is Maxime Barbel / demonslayer-world (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vizmediallc.com>, registered with 1&1 IONOS SE.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2021; the Forum received payment on June 24, 2021. The Complaint was received in English.
On June 25, 2021, 1&1 IONOS SE confirmed by e-mail to the Forum that the <vizmediallc.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 July 6, 2021, the Forum served the English language Complaint and all Annexes, including a French and English language Written Notice of the Complaint, setting a deadline of July 26, 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@vizmediallc.com. Also on July 6, 2021, the French and English language 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. Respondent did however send an email to the Forum, see below.
On August 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
Preliminary Issue: Language of Proceeding
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in French, thereby making the language of the proceedings French.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, Respondent has received Commencement Notification in French and has sent an email to the Forum indicating that it understood the English-language Complaint. Respondent has chosen not to respond formally to the Complaint. Complainant has presented evidence showing that Respondent maintains a social media profile and a web site that include English-language content. Complainant also alleges – but does not provide evidence to prove – that Respondent sent fraudulent English-language emails using the disputed domain name; the Panel finds that Complainant has not satisfied its burden of proving this allegation. Nevertheless, Complainant has provided sufficient evidence to show that Respondent is familiar with the English language. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
A. Complainant
Complainant states that it produces and distributes motion pictures, films, and television programs. Complainant’s original trademark applications for VIZ MEDIA were filed in 2005 and accepted in 2009. These registrations have since lapsed through mistake or accident, but have since been submitted for new registration. Complainant argues that it has common law rights in the VIZ MEDIA mark based upon use of the mark in commerce since 2005.
Complainant alleges that the disputed domain name is identical or confusingly similar to its VIZ MEDIA mark because it contains the entire VIZ MEDIA mark, adding only the letters “llc,” which renders the domain name identical to the name of Complainant’s business, “Viz Media, LLC.”
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has not licensed or authorized Respondent to use the VIZ MEDIA mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to send spam emails, in which Respondent falsely identifies itself as a representative of Complainant’s company, likely in an attempt to obtain personal information from the recipients of the emails.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because Respondent uses the domain name in email addresses falsely to identify as a representative of Complainant’s company and perpetrate email fraud. Furthermore, Respondent’s use of the disputed domain name to redirect to Complainant’s own website, <viz.com>, may also constitute bad faith use. Additionally, Respondent had actual knowledge of Complainant’s rights in the VIZ MEDIA mark because Respondent copied the source code verbatim from Complainant’s website, as well as the description of Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its French-language email to the Forum, Respondent states, in pertinent part (translation by the Panel)[i]: “I have received a complaint from [Complainant’s] lawyer through the UDRP Forum concerning the [disputed domain name], I have no problems with the idea of giving them the domain, how should I proceed?”
For the reasons set forth below, the Panel will not make any findings of fact.
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 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."
In the present case, Respondent consents to transfer the disputed domain name to Complainant. That is, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <vizmediallc.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 30, 2021
[i] The original French statement is: « J'ai reçu une plainte de l'avocat de la société Viz media par le biais du forum udrp à propos du nom de domaine "vizmediallc.com", je n'ai aucun problème à l'idée de leur léguer le domaine comment dois-je procéder ? »
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page