The story of how a major IP content company registered a trademark for a character name identical to mine and demanded the transfer of my domain

1. Introduction: Purpose of this article and disclaimer

This article summarizes the process by which a character with the same name as the pen name/avatar name I have used for many years was announced by a major IP content company, and how I received a transfer request from that company for the .com domain I had acquired with the same name.

The situation has now calmed down, and because it was a very rare experience, I am sharing it as knowledge for individual creators.

The purpose of this article is not to criticize a specific company. It is to share what individuals who work under pen names, business names, or circle names should check and what they can do when they get involved in trademark or domain name troubles..

I ask that readers refrain from identifying the parties involved, making inquiries, or engaging in aggressive behavior.

Furthermore, regarding legal assessments, this is my understanding based on the research I did at the time and does not constitute professional advice.

2. Roughly what happened

The overview is as follows.

• A character with the same name as my long-time activity name was announced by a major IP content company and trademarked.

• Without knowing that fact, I acquired a .com domain with the same string as my activity name.

• Later, a law firm claiming to represent the other party demanded a domain transfer, stating it was 'trademark infringement and a violation of UDRP'.

• As a result of my investigation, I determined that I held the domain legitimately and did not comply with the request to provide a transfer code.

• After that, the other party withdrew the transfer request based on the premise of 'infringement of rights'.

• I still hold the domain, but it is in a state where a certain level of caution is required for my activities.

3. Background of the trouble

• 2022
  A character with the same name as my pen name/avatar name was announced by a major company that handles IP content. At this point, I did not know of the character's existence.
  

• 2023
  A trademark registration for the character in question was filed. Even at this point, I was not aware of that fact.
  

• First half of 2024
  I acquired the domain xxxxxx.com, which is the same string as my pen name. The purpose of the acquisition was for name resolution for my website and game server.
  

• Second half of 2024
  I was contacted via the registrar's Whois by a law firm claiming to represent the other party regarding the domain I hold. The content was,
  Your domain is similar to the other party's trademark and constitutes an infringement of rights, so transfer the domain..

• 2025
  When I checked while writing this article, I confirmed that a character trademark that perfectly matches the domain string I hold had been additionally filed and registered.

4. Content of the notification from the other party

I received an email from a law firm claiming to represent the other party, which summarized the following points. The original text is in English.

At the time the email was sent, I suspected it might be a phishing email aimed at domain hijacking. The reasons are as follows:

1. It was an email from an individual claiming to be a foreign law firm, and no proof of their relationship with the rights-holding company or any means of verification was provided.

2. Without any prior fact-checking, I was demanded to take immediate action: to unlock the registrar lock and provide the transfer authorization code within 5 calendar days, based on the premise that I was infringing on their rights.

Providing a transfer authorization code carries the risk of losing the domain in an unintended manner. Therefore, I decided not to follow the instructions initially and instead proceeded with fact-checking and investigation first.

After that, I received multiple reminder emails, so I judged that it was necessary to respond formally.

5. What I investigated myself

Does domain ownership really constitute an infringement of rights?

First, I looked into the "Uniform Domain-Name Dispute-Resolution Policy (UDRP)" that the other party cited as the basis.

Under the UDRP, for a complainant to request the transfer or cancellation of a domain, they must generally prove all three of the following requirements:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights

2. The registrant has no rights or legitimate interests in respect of the domain name

3. The domain name has been registered and is being used in bad faith

Of these, I thought the first point, "identity/similarity," could potentially be proven by the other party.

On the other hand, regarding the second point, "no rights or legitimate interests," I had been using that name as my pen name/avatar name since before the other party's character was announced, and there were records of me being called by that name.

Also, regarding the third point, "bad faith registration and use," my purpose for acquiring the domain was for name resolution for my own website and game server, and records of its use remained.

Therefore, I judged that there was significant room to argue against the other party's claims, at least under the UDRP.

Can the trademark right itself be contested?

Taking this opportunity, I also looked into systems such as filing an opposition or a trial for invalidation regarding trademark registration.

For example, if it is immediately after registration, there is a system to request the Japan Patent Office to review the validity of the registration through a trademark opposition. Also, even after registration, there is a procedure called a trial for invalidation if there are certain grounds for invalidation.

However, these are not automatically granted simply because 'I have been using that name for a long time'. A review based on concrete evidence is necessary, such as whether it was widely known as a commercial activity beforehand, or what the circumstances are in relation to the designated goods and services.

In my case, my activities were within the scope of a hobby, and the name or commercial activities were not widely known. Also, at the time, the only thing the other party was taking issue with was the domain.

Therefore, the response strategy for this matter was not to dispute the validity of the trademark right itself, but to focus strictly on protecting the domain that I had legitimately acquired and was using.

6. Actions actually taken

Saved and organized past activity history

First, I gathered evidence showing that I had been using that name as my activity name before the announcement of the other party's character and before the trademark registration.

Specifically, these included the following:

• SNS posts with past timestamps

• Posts where others addressed me by that name

• Profile pages

• Past activity pages and screenshots

• Records showing the purpose of use before and after domain acquisition

Information on SNS may become inaccessible later due to deletions, account suspensions, specification changes, or changes in search accuracy.

Since I had to scramble to collect information that could serve as evidence this time, I felt that I should have been saving my activity history on a regular basis.

Transferred the registrar

At the time, the registrar for the target domain was a US-based company.

I transferred it to a registrar within Japan to make it easier to conduct communications in Japanese in the event of a dispute.

Also, since the registrar's location could potentially be relevant to the legal jurisdiction and procedural handling under UDRP, I wanted to at least move it to an environment where I could handle things more easily. However, I do not know if this decision was actually effective. It was strictly a judgment based on my risk management at the time.

Reviewed security around the domain and game server

At the same time, I also reviewed the security measures around the domain and the game server.

This is a measure to ensure that in the event of an emergency, I can explain that the domains and servers I manage are not being misused by third parties.

Verified the authenticity of the opposing counsel

Next, I confirmed whether the email from the law firm was truly sent by an official representative of the rights-holding company.

The main points I considered necessary to verify were as follows:

• Whether the sender is an actual law firm and representative

• Whether they are truly authorized by the rights-holding company

• Whether they have the authority to request the provision of a domain transfer code

The email correspondence did not include any documentation verifying the authorization. Therefore, I contacted the relevant Japanese subsidiary, and several months later, I confirmed through them that the counsel was legitimate.

Refuted the notice

I summarized the findings of the investigation above, explained that I am the legitimate owner of the domain, and stated that I could not comply with the request to provide a transfer code.

7. Shift in negotiations

In early 2025, I was contacted by a different law firm in Japan.

The content was a proposal to withdraw the previous transfer demand based on 'infringement' and instead acquire the domain through voluntary negotiation.
In addition, they offered compensation for the domain transfer procedure.

I informed them that I could not accept the offered amount, and that the series of events had caused me significant time, mental, and practical burdens, so I requested an apology and compensation for the costs incurred.

However, the other party responded that since their actions were not illegal, they could not provide an apology or compensation.

I have conveyed that I am willing to continue negotiations if there is an improvement in their response and the transfer conditions, but as of now, the negotiations are effectively at a standstill.

8. Current impact

Regarding the domain in dispute, the initial objective was achieved because the transfer demand was withdrawn.

Since the domain would have been lost if I had simply complied with the request, I believe that explaining my situation was at least meaningful.
However, I have not received any guarantee that the transfer demand will not be resumed in the future.

On the other hand, the other party's trademark rights still exist. Therefore, I have become more cautious in my activities compared to when I was unaware of the situation.

Trademark rights do not grant the right to monopolize a string of characters in every situation. The scope of trademark rights is determined by the relationship between the trademark and the designated goods or services for which it is used.
However, the trademark acquired by the other party in this case included classifications such as "provision of entertainment," which could overlap with the streaming, video, and event-related activities I intend to pursue in the future.
Therefore, even if whether it actually constitutes trademark infringement is a matter for individual judgment, it has become quite difficult to operate in practice.

Incidentally, trademark law has a system called "prior user rights."
This is a system that may allow for continued use of a trademark if it was already being used under certain conditions before someone else filed a trademark application.
However, this is not granted simply because you "used the name first."
It seems that "being widely recognized among consumers before the other party's trademark application"is a condition.
For hobbyist activities or small-scale personal projects, providing this proof is likely to be a major hurdle.
Also, even if prior user rights were recognized, there could be separate risks if you want to start selling merchandise, holding events, or starting services in a different genre after the trademark has been taken by someone else.

Therefore, I felt that once a trademark is registered, it is inevitable that it will at least become harder to expand your activities.

Some people might think, "You should just change your activity name."
Of course, I think that is the safest option.
However, since it is a name I have used for a long time and have an attachment to, I have generally decided to keep using it. On the other hand, when engaging in activities that seem to carry high risk, I try to use a slightly modified alias.

9. What I want to convey to individual creators

I believe this incident is a trouble that could happen to anyone who operates under a pen name, business name, circle name, or avatar name, regardless of minor differences in the case.

However, even with the same "conflict of activity names," the options available to already famous creators or those with widely known commercial activities differ significantly from those available to individuals operating within the scope of a hobby.

If the name or activities are already widely known, it may be possible to consider filing an opposition, a request for an invalidation trial, or a request for a cancellation trial against the other party's trademark registration. Also, there may be cases where the company itself avoids using the same or similar names during the planning stage, preventing the issue from arising in the first place.

On the other hand, for individuals like me who operate within the scope of a hobby and are not actively engaged in commercial activities, or for individuals who are not yet widely known but want to expand their activities in the future, the situation becomes quite severe.

Trademark registration, notifications through law firms, dealing with disputes, and consulting with experts—all of these require time, money, and mental burden for a small-scale individual to handle on the same playing field as a corporation.

Also, from the company's perspective, it is realistically difficult to identify all non-famous individual creators during the planning stage and avoid using the same or similar names. In other words, this is not simply a matter of "the company is bad" or "the individual is bad"; it is a structure where the individual creator is realistically more likely to be at a disadvantage.

However, it is not that you cannot do anything.

Keep records that show when your activities started, and manage your main domains and SNS IDs. If you are thinking about the future, engage in commercial activities even if they are small-scale.
Such activities can lead to a higher possibility of being recognized as a conflict risk when third parties or companies try to use the same or similar names.

10. Things individual creators should do

Search for trademarks before deciding on an activity name

Before deciding on an activity name, I recommend checking for identical or similar trademarks using J-PlatPat or similar services.

Since there is a possibility that trademarks with similar pronunciations exist even if the spelling is different, it is better to search including pronunciations and variations in spelling.

Secure domains and main IDs early

If you intend to use your activity name for a long time, you should also consider securing domains like .com or .jp and your main SNS IDs early.

Save your activity history

It is extremely important to save posts, profiles, videos, distributed materials, websites, and server information that show the date your activities began.

In particular, posts where others refer to you by that name, event participation history, distributed materials, and announcement images serve as documentation showing that you were active under that name.

Leave records of tangible activities

If you plan to sell merchandise, stream, hold events, make games, or produce music in the future, it is good to publish and record them as tangible activities, even if they are small.

Consider trademark registration as an option

If you are going to use your activity name in a serious capacity, registering the trademark in advance is very effective.

However, trademark registration involves application fees, registration fees, and renewal fees. According to the Japan Patent Office's fee schedule, a trademark registration application is "3,400 yen + 8,600 yen per classification," the trademark registration fee is "32,900 yen per classification," and the renewal registration application is "43,600 yen per classification." If you hire an agent, patent attorney fees and other costs will also be incurred separately.

For small-scale individual creators, it is often unrealistic to register trademarks in every area of activity.

10. Conclusion

If there are any significant changes to the situation in the future, I may update this article to the extent that it is appropriate.

Once again, I would like to reiterate that this article is not intended to criticize or attack any specific company or individual. Even if you are able to guess who the parties involved are, please refrain from contacting them or engaging in aggressive behavior.

I hope this article serves as a useful reference for others who are working under their own individual names.

The End