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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Square Enix dba Square Enix Co. Ltd. v. NOLDC, Inc.

Case No. D2006-0630

 

1. The Parties

The Complainant is Kabushiki Kaisha Square Enix dba Square Enix Co. Ltd., Tokyo, Japan, represented by Graham & Dunn, PC, Seattle, Washington, United States of America.

The Respondent is NOLDC, INC., New Orleans, Louisiana, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <valkyrieprofile.com> is registered with Domain Contender, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2006. On May 22, 2006, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the domain name at issue. On May 23, 2006, Domain Contender, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2006.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 30, 2006. 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.

 

4. Factual Background

The Complainant is a developer and distributor of computer games and related merchandise. It was formed in 2003 as a result of the merger of Enix Corporation and Square Co. Ltd.

In August 2000, one of the Complainant’s predecessors released on to the market a role playing computer game under the title Valkyrie Profile.

The Complainant currently holds registered trademarks for VALKYRIE PROFILE in respect of computer game software and instruction manuals in the United States of America (Nos. 2831101 and 2514477), Australia, Hong Kong, New Zealand, Norway, Singapore and Thailand. There are also pending applications in the European Community and Canada. The annexes to the Complaint include sufficient documentary evidence of the existence of these registrations and applications. The United States trademark registrations specify dates of first use in commerce in the United States in August 2000.

The Complainant asserts that it has achieved extensive sales of the game in the United States and around the world since that date.

The Respondent registered the domain name, <valkyrieprofile.com> on April 2, 2005.

The domain name resolves to a website which consists of a collection of links to various search categories. Clicking on listed categories takes one to a table of “sponsored links” under a menu bar which includes “buttons” or “tabs” named, respectively, “Valkyrie Profile”, “Valkyrie”, “Star Ocean”, “Personality Profile”, and “Company”.

Clicking on these “buttons” takes one to lists of sponsored links again. For “Star Ocean”, the first sponsored link is to eBay’s listings of another computer game of that name. Like “Valkyrie Profile”, “Star Ocean” is another of the Complainant’s products.

 

5. Discussion and Findings

The address for the Respondent is in New Orleans which, of course, was largely devastated by Hurricane Katrina in August last year. Recognising this, the Complaint includes, as an annex, evidence of emails and other correspondence of the Complainant’s efforts to contact the Respondent before filing the Complaint. This included attempts to communicate by fax and email. An investigator also telephoned and the call rolled over to a recording stating that NOLDC was not able to answer every call and it was best to contact it by email.

The Center forwarded copies of the Complaint to the Respondent by email, facsimile and courier to the addresses which the Registrar has confirmed are the correct details for the Respondent. These methods conform with the Center’s obligations under paragraph 2 of the Rules.

Accordingly, bearing in mind that more than 8 months had passed between Hurricane Katrina and the commencement of the dispute and the Center’s compliance with the appropriate requirements of the Policy and Rules, the Panel finds that the Complaint has been adequately notified to the Respondent.

There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the complaint where the respondent does not submit a response. This is not a simple “rubber stamping”, however, as paragraph 15(a) of the Rules directs the panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the panel deems applicable.

Therefore, under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(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.

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it.

The Complainant has clearly demonstrated ownership of registered trademarks for VALKYRIE PROFILE in a number of countries around the world, including the United States, which is the location of the Respondent given in its Whois details as confirmed by the Registrar.

The domain name differs from the registered trademark rights only by the addition of the “.com” suffix. It is well-established that such a difference is to be ignored for the purposes of applying this test under the Policy: See e.g. Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252; Williams-Sonoma d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582.

Accordingly, the Panel finds that the domain name is identical or confusingly similar to the Complainant’s registered trademark rights.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These instances are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.

Given the difficulties for a complainant in proving such a negative, it is now widely accepted that the complainant must establish a prima facie case of lack of rights or legitimate interests and an evidential onus will then shift to the respondent to rebut the presumed absence of rights or legitimate interests: See e.g. Advance Magazine Publishers Inc. and Les Publications Condй Nast SA v. ChinaVogue.com, WIPO Case No. D2005-0615.

Here, although the Complaint does not contain an explicit denial, it is clear from the Complaint that the Complainant denies authorizing the use of VALKYRIE PROFILE by the Respondent. Secondly, the Respondent’s name, at least as it has used it in registering the domain name, is NOLDC, Inc. VALKYRIE PROFILE is not apparently derived from that name. Thirdly, as the Respondent actually uses the domain name to resolve to a generic advertising portal, it cannot rely on the legitimate noncommercial defences. Fourthly, the Respondent uses the domain name to attract custom for a wide range of goods and services, not just genuine products of the Complainant. The quality of that use is coloured by considerations taken into account under the third factor: whether or not the domain name has been registered and used in bad faith.

In these circumstances, the Complainant has raised a prima facie case of the absence of rights or legitimate interests in the domain name. By failing to submit a Response, the Respondent has not displaced that prima facie case. Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the domain name within the requirements of the Policy.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

Evidence of Registration and Use in Bad Faith.

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

These are examples of “bad faith” only and not an exhaustive listing as they are listed “without limitation”.

The Complainant contends that its trademark, VALKYRIE PROFILE, has a strong reputation and is widely known as evidenced by its use in connection with a popular computer game distributed in the United States and other countries. It further points out that the Administrative and Technical Contacts given for the Respondent in its whois record for the domain name are “Purchase, Domain noldc_dc@04desember.com”. This, the Complainant contends, indicates that the Respondent has registered the domain name for the purposes of resale while using it to derive advertising revenue in the interim.

The Complaint does not include evidence to support the allegation that the Complainant’s trademark has a strong reputation and is widely known. The Complaint does not include even rudimentary evidence of sales revenues or advertising expenditures of a kind which would enable an inference of such reputation to be drawn.

The significance of the claim to reputation in the context of the present dispute is that it is intended to supply the link between the Respondent’s activities and prior knowledge of the Complainant’s trademark sufficient to stigmatize the Respondent’s conduct as registration and use in bad faith. Using a domain name to derive advertising revenue, even to resell it, is not per se prohibited by the Policy. It is such use motivated by an intention to trade on the trademark rights of a trademark owner that is stigmatized.

While the Complainant’s failure to provide evidence of its reputation in the trademark could ordinarily be fatal, it is not in this case.

First, while the trademark does consist of two plain English words, they are not in combination descriptive or generic.

Secondly, it is not necessary to resort to considerations of the extent to which a United States-based respondent is infected with constructive notice of United States registered rights: See e.g. The Sportsmen’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305. Here, there is clear evidence that the Respondent does have actual knowledge of the Complainant and its trademarks as the Respondent’s website does not simply contain references to “Valkyrie Profile” but also has a tab or “button” labeled with the title of another of the Complainant’s games, “Star Ocean”.

In these circumstances, the Panel is prepared to infer that the Respondent has registered the domain name with knowledge of the Complainant’s computer game entitled with the trademarked name. Accordingly, the case is distinguishable from decisions such as Pinnacle Intellectual Property v. World Wide Exports, WIPO Case No. D2005-1211 and Early Learning Centre Limited v. Kiansu Thoi, WIPO Case No. D2005-0692.

Therefore, the Panel finds that the domain name has been registered and used in bad faith within the meaning of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <valkyrieprofile.com> be transferred to the Complainant.

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Warwick A. Rothnie
Sole Panelist

Dated: July 14, 2006