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Manga Films, S.L. v. Name Administration, Inc. [2005] GENDND 1587 (29 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Manga Films, S.L. v. Name Administration, Inc.

Case No. D2005-0730

1. The Parties

The Complainant is Manga Films, S.L., Barcelona, Spain, represented by March & Asociados, Spain.

The Respondent is Name Administration, Inc., Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mangafilms.com> is registered with Domain Name Sales Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2005. On July 12, 2005, the Center transmitted by email to Domain Name Sales Corp. a request for registrar verification in connection with the domain name at issue. On July 20, 2005, Domain Name Sales Corp. 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, billing, and technical contacts. Domain Name Sales Corp. also confirmed that the language of the registration agreement used by the Respondent is English.

Apart from one matter, 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”).

It would appear that the Complainant did not send a copy of the Complaint and Annexures to the Respondent, as required by paragraph 3(b)(xii) of the Rules, when filing it with the Center.

Once this deficiency had been rectified, 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 July 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 15, 2005. The Response was filed with the Center on August 9, 2005.

The Center appointed Warwick A. Rothnie, Albert Agustinoy Guilayn and Nelson A. Diaz as panelists in this matter on September 20, 2005. The Panel finds that it was properly constituted. Each member of 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

According to the Complaint, the Complainant was founded in 1993 and is one of the most important distributors, commercialisers and producers of films in Spain. It currently employs 88 persons and in 2003 had revenues in excess of Euros 50 million, of which Euros 23 million were derived from the video market. Films it distributes include “anime” style films as well as classic films by directors such as Buņuel, Renoir, Fellini and Woody Allen. It also distributes new films. Although it is not clearly stated in the Complaint, it would appear from the materials submitted with the Complaint that the Complainant’s rights are mainly limited to Spain, or Spanish language territories.

On September 8, 2003, the Complainant applied for the registration of MANGAFILMS as a trade mark in Spain in classes 9, 16, 38, 39 and 41. Registration was granted on May 25, 2005, under No. 2,556,763. It has also registered the trademark in Andorra, No. 20075 and has a pending Community Trademark Application No. 4,285,573.

The Complainant is also the registrant of the domain names <mangafilms.es> (from June 3, 1996), <mangafilms.biz> and <mangafilms.info> (from late 2001), <mangafilms.com.es> and <mangafilms.net.es> (from July 2003), and <mangafilms.net> and <mangafilms.org> (from October 4, 2004).

From 2000 to early 2004 (email from Marisa Blanco to Dolors Ruiz included in Annexure IX to the Complaint), the Complainant was also the registrant of the domain name in dispute. It is not clear from the Complaint the reason for the non-renewal of the registration.

The Complainant also states that about 6% of the contacts it received at its Internet presence were to the website to which the domain name in dispute resolved (when it was registered by the Complainant) and, by way of illustration, indicates that for the period of October to December 2001, that website received more than 1,600 visits each month. Once again, from the materials included in the Complaint, it would seem likely that these are mainly from people in Spain or Spanish language speakers.

Neither the Complaint nor the Response provide much information about the Respondent. The Response does refer to the Respondent, however, as a small advertising company.

The Respondent registered the domain name on June 2, 2004, after the Complainant’s registration lapsed. The domain name resolves to a website which provides sponsored links to a range of online resellers of “manga” films. The website also includes links to a number of “Related Searches” including “Buy DVD Movie” and “DVD Media” (by way of examples only).

The Respondent’s name in its copyright notice is hyperlinked to the website at the domain name <nameadmininc.com>. At that website, it appears that the Respondent describes itself in the following terms:

“Name Administration Inc. is a leading domain name administrator, website developer and internet traffic syndicator.

Many generic domain names receive organic browser type-in traffic from people looking for information related to the subject matter described within the body of the domain name. Name Administration’s system, serves targeted advertising content to generic domain names through an advertiser network looking for specific types of internet traffic for their businesses and websites. More info is available in our FAQ”.

Then follows a listing of its services and further promotional material.

5. Discussion and Findings

Paragraph 15(a) of the Rules directs the Panel to decide the 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.

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 trade mark 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.

Each of these are considered in turn below.

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 those rights.

At the least, the Complainant has demonstrated ownership of the registered trademarks in Spain and Andorra referred to in section 4 above.

The question of resemblance for the purposes of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion. See, for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(a)(ii) and 4(a)(iii).

Here, the domain name differs from the Complainant’s proved trademark rights only in the addition of the gTLD “.com”. The addition of such a generic factor does not take the domain name outside the scope of the Policy’s requirements. See, for example, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. 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 confusingly similar to the Complainant’s proved trademark rights. The Complainant therefore has satisfied the requirement under paragraph 4(a)(i) of the Policy.

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.”

The examples given in paragraph 4(c) are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.

In view of the difficulty that a complainant faces in proving a negative of the sort required by paragraph 4(a)(ii) of the Policy, panels have required a complainant to establish at the least a prima facie case under this heading and, if that is made out, an evidential onus shifts to the respondent to rebut the presumption of no rights or legitimate interests.

The Complainant points out that the Respondent is not commonly known by the domain name. It also asserts that no-one, apart from the Complainant, possesses a trademark for MANGA FILMS or uses that name as a company name. The Complainant has not authorised or permitted the Respondent to use the domain name.

In answer to this, the Respondent relies on the descriptive nature of the term MANGA FILMS and argues that it is perfectly legitimate for the Respondent to use the domain name in those parts of the world where the Complainant does not have trademark rights.

As the Respondent points out, the Compact Oxford Dictionary defines “manga” as a noun meaning “Japanese cartoons, comic books, and animated films with a science-fiction or fantasy theme”. The definition in the Cambridge English Dictionary, online edition, is to similar effect.

Annexure B of the Response includes print outs from the US Trademarks Register for four trademarks that have been registered, each of which features the word MANGA and some other element or elements: Trademark Nos 2350378 (MANGA VIDEO and device) in international classes 9, 25, 41 and 42 including for video recordings, 2878096 (MANGA MAX) in class 16 for cartoon strips etc., 2971445 (MANGA MANHATTAN 411 and device) in class 16 for cartoon books etc., 2948030 (MANGA PUNK) in class 16 for graphic novels etc. All of these trademarks are registered in different names. In each case, exclusive rights to MANGA have been disclaimed and there is an endorsement stating that the English translation of MANGA is “comic”.

US Trademark 2350378 has been registered by Manga Entertainment Limited, a UK company, which the Complainant has not identified as being associated with it. Annexure C to the Response is a print out from the website to which the domain name <manga.com> resolves. The website is for a company called Manga Entertainment Inc. which specialises in the production and marketing of Japanese animation. The website states that it is a subsidiary of a US company, IDT Corporation, and says that Manga Entertainment originally opened in London in 1991, that is, two years prior to the foundation of the Complainant in Spain.

Annexure D includes a range of print outs showing, amongst other things, that various databases on the Internet classify over 3,000 films under the category “Anime & Manga Movies”. It also includes a print out of the <wikepedia.com> entry for Manga which fills 10 printed pages.

In these circumstances, it is clear that outside Spain and Andorra, at least in English speaking countries, the term MANGA FILMS is descriptive.

Arguably, whether or not a Respondent has rights or legitimate interests in a domain name could be colored by the use that the Respondent puts the domain name to, matters which generally fall for consideration in relation to the third element of paragraph 4(a) of the Policy.

In this case, the Respondent is using this descriptive term in connection with the subject matter that term describes. The Complainant seeks to impugn the legitimacy of this use by reliance on the well-known nature of its trade mark and points out that the Respondent is advertising through its website competing versions of films for which it has distribution rights. The Complainant invokes the support of an earlier panel’s decision, in Caesars Entertainment, Inc. v. Infomax, Ltd., WIPO Case No. D2005-0032, in support of this argument. The Complainant also draws attention to the links on the Respondent’s website to films and other materials which are not manga films.

As the Panel has noted, however, the rights and reputation that the Complainant has demonstrated, through the Complaint and its attachments, appear to be limited to Spain, or Spanish language countries. In contrast, the Respondent’s website is in English and deals with English language versions of the films to which the Complainant has Spanish, or Spanish language, rights. The placing of additional links to materials which are not manga films, at least in this case, does not undermine this fact.

The Respondent points out that other panels have found that using a domain name in connection with the dictionary meaning of the words found therein is sufficient to constitute a legitimate interest under the Policy and cites in particular decisions relating to the present Respondent: Snowboards-for-sale.com, Inc. v. Name Administration Inc., WIPO Case No. D2002-1167, Fluke Corporation v. Name Administration Inc. (BVI), National Arbitration Forum Case No. 430650 and Angstrom Corporation v. Name Administration Inc National Arbitration Forum Case No. 281591. While this Panel is not bound by those decisions, there are obvious reasons why similar situations should be treated in like fashion. In any event, this Panel accepts that there may be a legitimate interest in a domain name where that domain name incorporates a descriptive term and is used in connection with the subject matter that term describes, where there is no obvious intention to trade on the rights or reputation of a trade mark owner in another part of the world.

In these circumstances, therefore, the Panel finds that, on the evidence in this record, the Respondent has rights and legitimate interests in the domain name and, accordingly, the Complainant has failed to establish the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In view of the conclusion the Panel has reached in relation to the second requirement of paragraph 4(a) of the Policy, it is not strictly necessary to address this requirement. On the record in this proceeding, however, the Panel would not be prepared to find that the Respondent had registered and used the domain name in bad faith for the reasons briefly outlined in the discussion of the second factor above.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie Presiding Panelist
Albert Agustinoy Guilayn Panelist	Nelson A. Diaz Panelist

Date: September 29, 2005