National Arbitration Forum
DECISION
Tetris Holding, LLC v.
Smashing Conceptions
Claim Number: FA0707001030720
PARTIES
Complainant is Tetris Holding, LLC (“Complainant”), a Delaware corporation, represented by Jeanne Hamburg, of Norris, McLaughlin
& Marcus, P.A., 875 Third Avenue, 18th Floor, New York, NY 10022. Respondent is Smashing Conceptions (“Respondent”), represented by Alx
Klive, of Smashing Conceptions UK31 Birch House,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <freetetris.org>, registered with Go Daddy
Software, Inc. (the "Registrar ").
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Mr. Peter L. Michaelson, Esq. as Panelist.
PROCEDURAL HISTORY
The Complaint was brought pursuant to the Uniform Domain Name Dispute
Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrppolicy24oct99.htm>, which was
adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, and approved on October 24, 1999, and in accordance
with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy
(“Rules”) as approved on October 24, 1999, as supplemented by the National
Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy then in effect (“Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically
on July 10, 2007; the National
Arbitration Forum received a hard copy of the Complaint, together with a
declaration of Henk B. Rogers, the latter containing Exhibits 1‑12, on July 11, 2007.
On July 11, 2007, the Registrar
confirmed by e‑mail to the National Arbitration Forum that the <freetetris.org>
domain name is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the
name. The Registrar also verified that
Respondent is bound by the Go Daddy Software,
Inc. registration agreement and has thereby agreed to resolve domain‑name
disputes brought by third parties in accordance with the Policy.
On July 17, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 6, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e‑mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@freetetris.org by e‑mail.
A timely Response, together with Exhibits 1‑11, was received and
determined to be complete on August 6, 2007.
On August 14, 2007 and in compliance with Supplemental Rule 7,
Complainant timely submitted an additional submission together with Exhibits 13‑21.
On August 15, 2007, pursuant to Complainant’s
request to have the dispute decided by a single‑member Panel, the
National Arbitration Forum appointed Mr. Peter L. Michaelson, Esq. as Panelist and set a due date of August 29, 2007 to
receive the decision from the Panel.
On August 21, 2007 and in compliance with Supplemental Rule 7,
Respondent timely submitted an additional submission together with Exhibits 12‑16.
Owing to unexpected time conflicts
experienced by the Panel all of which constituted unforeseen circumstances, the
Panel, by its order dated August 29, 2007, extended this due date to September
12, 2007.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Confusing similarity/identicality
Complainant contends that the disputed domain name is confusingly similar to the TETRIS Marks inasmuch as the name incorporates Complainant's mark TETRIS along with a prepended generic term "FREE", the latter term being unable to sufficiently distinguish the resulting name from the mark so as to dispel confusion of Internet users.
Hence, Complainant concludes that it has met the requirements of paragraph 4(a)(1) of the Policy.
2. Rights and legitimate interests
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
Specifically, Complainant alleges that Respondent was well aware of the
fame of the mark TETRIS prior to its adoption of the disputed domain name and
that Complainant never authorized Respondent to use the TETRIS Marks in any
domain name. Inasmuch as here Respondent's
use of the mark TETRIS to provide Internet users with browser‑based
access to a video game which is substantially similar to Complainant's TETRIS
game, does not amount to fair use, then such use constitutes an infringement of
Complainant's exclusive rights in the mark.
Moreover, Complainant states that the mark TETRIS is inherently
distinctive and one for which it has spent considerable amounts of time, money
and labor to acquire its rights and then to police and enforce those rights. Hence, Respondent,
given its prior notice of the mark, could thus never have acquired any rights
and legitimate interests in the name; hence, its use of the disputed domain
name must be illegitimate.
3. Bad faith use and
registration
Complainant contends that
Respondent has registered and is using the disputed domain name in bad faith,
hence in violation of paragraph 4(a)(iii) of the
Policy.
Complainant alleges that inasmuch as Respondent was well aware of
Complainant's mark TETRIS or, given the fame of that mark, should have been so
aware when Respondent adopted and started using the disputed domain name, then
its registration and use of that name must be in bad faith.
B. Respondent
1. Confusing similarity/identicality
Respondent argues that the name is not confusingly similar to
Complainant's mark.
First, Respondent contends that the term TETRIS has become generic of a
genre of falling block games, of which Respondent's browser‑based version
is one game. Hence, Respondent contends
that Complainant no longer has any trademark rights in the term TETRIS when it
is used in conjunction with such games.
In that regard, Respondent argues that since Complainant's original
TETRIS game appeared in the industry in 1989, Complainant
has been "unable to prevent an avalanche
of similar falling block puzzle games becoming available, dozens of which are
freely available on the Internet today as on‑line games, and
dozens of which, like ours, are actually called
‘tetris’ or a variant thereof" (see hard‑copy printouts, provided in
Exhibit 5 to the Response, of home pages of 25 web sites where each provides a
TETRIS game that does not originate from Complainant). As such, the falling block genre of games is
no longer uniquely associated with
Complainant. In its place, an entire
class of falling block puzzle games has come to be known as TETRIS, both on‑line
and among the wider general public.
Second, Respondent asserts that, if Complainant
still has exclusive rights in the mark TETRIS, then the addition of the term
"FREE" in the domain name is sufficient to negate any confusion among
Internet users. In particular,
Respondent asserts that Complainant does not provide on‑line games and
hence is not well known by the general public for doing so (see a hard‑copy
printout in Exhibit 10, to the Response, of Complainant's home page at
<tetris.com>, through which Complainant does not offer any browser‑based
game). In contrast, Respondent's
activities are solely confined to providing on‑line, browser‑based
versions of old video games. The game of
TETRIS which Respondent provides on its web site (and which others provide on
their web sites ‑‑ as shown, e.g., in Exhibit 5 to the Response)
was not created by Complainant.
Third, Respondent points to the fact that by
including the term "FREE" in the name and using a gTLD (generic top level
domain) of ".org" rather than ".com", any possible
confusion is further ameliorated as no Internet user would expect a web site
having the term "FREEx.org" (where x is a mark) to be associated with
the web site of the mark owner, typically being a name in the form of
"x.com." Further, Respondent
points to a disclaimer, regarding the specific service it provides and which
expressly disassociates itself from the original game creator, and appears on
its web site, that further reduces any likelihood of user confusion from
arising (see a hard‑copy printout, which appears in Exhibit 1 to the
Response, of the home page of Respondent's web site).
Hence, Respondent contends that Complainant
accepts that other non‑original TETRIS games and various non‑official
TETRIS web sites exist.
2. Rights and legitimate interests
Contrary to Complainant's view, Respondent contends that, for any of several reasons, it has rights and legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
First, Respondent's web site is a non‑profit, non‑commercial website established
December 2005. The site
highlights the work of programmers, who recreate, as part of their education,
online versions of old classic video games which have long since been presumed
to have passed into the public domain.
Respondent, in turn, hosts those games on its web sites, without
receiving any commercial remuneration, so
that those games can be shared with a relatively wide audience. Respondent states that more than a half‑million
users currently visit its <freetetris.org> website each month, with 75%
being registered, and since its inception more than 2.4 million unique users
have visited that site. Further,
Respondent contents that, through its own efforts commencing from the time it
registered the name, it has established and marketed an increasingly popular
web site under that name. As a result,
that site is now commonly known as "Free Tetris" by hundreds of
thousands of Internet users who now visit it monthly. Consequently, Respondent alleges that it has
developed legitimate rights in both its game and the disputed domain name.
Second, since Respondent does not use any coding,
graphics or sounds which emanate from Complainant's TETRIS game and copyright
protection does not extend to protecting a genre, then Respondent's game does
not infringe on any intellectual property rights which Complainant may have in
its game. Hence, Respondent's offering
of its game through its web site is bona fide.
Further, since that offering predated the date on which Respondent was
placed on notice of this dispute, Respondent has legitimate rights in the
disputed domain name under paragraph 4(c)(1) of the Policy. Alternatively, if any such infringement does
exist, then Respondent contends that its actions in providing the game on a non‑profit
basis constitute "fair use" of that game, again legitimizing its
rights to the disputed domain name.
3. Bad faith use and
registration
Respondent contends, contrary to Complainant's view and for any of
various reasons, that it did not register and use the disputed domain name in
bad faith.
First, Respondent states that it never offered the disputed domain name
for sale to anyone, including Complainant; Complainant never alleged that
Respondent ever did so.
Second, Respondent never engaged in a pattern of registering
"tetris"‑based domain names, let alone to prevent Complainant
or any one else from registering such a name ‑‑ nor does
Complainant allege that Respondent ever did.
In that regard, Complainant owns the names <tetris.com> and
<tetris.net>.
Third, Respondent states that it never acted in any way to
intentionally or otherwise disrupt Complainant's business. Here too, Complainant never alleged that
Respondent ever did so.
Lastly, Respondent contends that it registered the disputed name in
good faith with an intent to establish a non‑commercial,
bona fide gaming web site, which in
fact it did. Respondent states that
inasmuch as its site is non‑commercial, Respondent could never attract
Internet users for commercial gain.
Further, Respondent never set out to mislead or confuse Internet users
as to the origins of its site ‑‑ and, in light of the disclaimer on
its site, manifested just the opposite.
C. Additional Submissions
The Panel has fully considered both submissions as both were timely
made and complied with the requirements of Supplemental Rule 7. Nevertheless, the Panel finds that, for the
most part, both submissions, reiterate and amplify
various allegations set forth in the Complaint.
Hence, for the sake of brevity, the Panel will very briefly summarize
just a few particularly salient arguments, including certain ones not
previously made by the parties.
1. Complainant
Complainant strongly argues, contrary to Respondent's view, that its
TETRIS Mark is not generic. Complainant
states that the mark TETRIS is a coined word which is inherently distinctive,
famous and uniquely associated with the TETRIS video game emanating from
Complainant. Complainant contends that
Respondent has offered no proof to support it claim that the mark has become
generic.
Complainant further argues that Respondent's lack of legitimate
interests is illustrated by: (a) the latter's registration of the disputed
domain name through a proxy service (Domains by Proxy) which, in turn, shielded
Respondent's true identity from appearing in the WHOIS registration entry for
the name;
(b) the lack of any disclaimer, contrary to
Respondent's claim, on the <freetetris.org>
web site. Rather, a small, non‑prominent
disclaimer appears on the <freevideogamesonline.org> site (see a hard‑copy
printout, in Exhibit 1 to the Response, of the home page to this site) to which
a link appears on the former site; this disclaimer being insufficient to dispel
confusion of Internet users; and
(c) by virtue of Respondent's web site ranking higher, in terms of user
traffic, on the Google search engine, than Complainant's site, that ranking in
itself is commercially valuable to Respondent, hence negating the non‑profit
nature of Respondent's web site.
Moreover, Respondent's higher ranking on the Google search engine,
simply results
from its having traded off Complainant's goodwill, which, in turn, reflects
bad faith.
2. Respondent
Respondent states that Complainant misconstrues the former's assertion
that the mark TETRIS is generic.
Respondent is not arguing that the mark is generic for any use, but
rather when used in conjunction with falling block puzzle games. In that regard and contrary to Complainant's
view, Respondent has provided sufficient evidence showing that the mark TETRIS
has so become generic. Specifically,
Respondent points to 25 examples of third‑party web sites that offer
games named TETRIS but which are not associated with Complainant and to a web‑based
article (see a copy of the latter in Exhibit 16 of the Response) that reports
the existence of "millions of Tetris clones".
In spite of what Complainant may believe as to any commercial value
resulting from Respondent's higher traffic level on the Google search engine,
this view simply masks the overriding fact that Respondent's web site is indeed
non‑commercial with its nature fully described on Respondent's site
portal at Respondent's "Free Video Games Project" web site. Respondent does not charge for access to its Free
Tetris video game, nor does it commercially exploit that game in any way.
Further, Respondent states that prior versions of its home page at <freetetris.org> did in fact
display disclaimers since the inception of that site and certainly prior to the
date on which the Complaint was filed.
Lastly, Respondent used the identity shield (proxy) service offered by
the Registrar simply to protect it from spam, fraud and other malevolent third‑party
action that occurs on the Internet.
FINDINGS
A copy of the WHOIS registration record for the disputed domain name appears in Exhibit 1 of the Rogers Declaration. As indicated, the domain name was registered on December 30, 2005.
A. Complainant’s
TETRIS Marks
Complainant owns various
a) TETRIS (stylized with a design element)
filed: August 20, 1999
This mark is currently registered for use in connection with "video
game cartridges and software for playing video games" in international
class 9; "clothing, namely shirts, hats and t‑shirts" in
international class 25; and "hand‑held video games" in
international class 28. The
registration certificate states that: first use and first use in commerce of
the mark for the goods in class 9 commenced as of June 30, 1997 and October 31,
1998, respectively; and both first use and first use in commerce of the mark
for the goods in class 25 and also the services in class 28 commenced as of
November 30, 1998.
b) TETRIS
filed: August 20, 1999
This mark is currently registered for use in connection with "video
game cartridges and software for playing video games" in international
class 9; and "clothing, namely shirts, hats and t‑shirts" in
international class 25. The registration
certificate states that both first use and first use in commerce of the mark
for these goods in classes 9 and 25 commenced as of June 2, 1989 and August 31,
1991, respectively.
c) TETRIS
last
renewed: June 27, 2000
filed: March 8, 1990
This mark is currently registered for use in connection with "games
and playthings; namely action figures, bagatelle games; video games and video
game cartridges; electronic game equipment for playing video games; electronic
game programs; electronic toys with a clock or timepiece feature; hand‑held
electronic toys; nonelectronic hand‑held games; player‑operated
electronic controllers for electronic video game machines; toy figures
mountable on pencils and pens" all in international class 28. The registration
certificate states that first use and first use in commerce of the mark for
these goods commenced as of June 2, 1989.
B. Complainant and its
activities
Complainant licenses the TETRIS Marks worldwide for use with the TETRIS
video game in multiple media, e.g., from wireless communications devices (such
as mobile telephones) to handheld video games to television console games. Complainant's licensees include Nintendo (for video games); Electronic Arts, Inc.
d/b/a EA Mobile (for mobile phones,
Apple iPods, PDAs); THQ, Inc. (for certain videogame consoles); and Radica Ltd.
(for electronic handheld games). See paragraph 8 of the Rogers Declaration.
Currently, Complainant has registered trademarks
in the term TETRIS in the
Complainant and its licensees have advertised TETRIS‑based
products around the world. See in the
Rogers Declaration: paragraph 8 and Exhibits 4‑7 (the latter providing copies
of various advertisements); Exhibit 8 (product packaging for Nintendo TETRIS game);
paragraph 9 and Exhibits 9 and 10 (advertisements in Asia and
On or about April 25, 2007, Complainant, through
its Counsel, became
aware of the fact that the disputed domain name resolved to a web site that
provided a link for any Internet user to engage in a free (no fee) game of
TETRIS. Complainant had never authorized the owner of
this site, i.e., Respondent, to provide such a game, whether on its web site or
elsewhere. To date, the disputed domain
name remains so active.
Complainant conducted a WHOIS search as recently as
June 20, 2007 which revealed that the registrant of the domain name is Domains By Proxy, Inc. (a
copy of those search results appears in Exhibit 1 to the Rogers
Declaration). Upon filing the Complaint,
Complainant was able to obtain the identity, from the Registrar, of Respondent
as being the true registrant of the disputed domain name.
C. Respondent and its
activities
Respondent's web site is a community website that exists as part of Respondent's wider community web site
called "The Free Video Games Project", the latter located at
<freevidegamesonline.org> (a copy of
the home page of the latter site appears in Exhibit 1 to the Response). Currently, the <freetetris.org> web site has over half‑a‑million users per month with
over 210,000 registered regular users (see web site statistics in
Exhibit 2 as provided by Google Analytics).
More than 2.4 million unique users have
visited Respondent's <freetetris.org>
web site since its inception in December 2005.
Further, since that date, Respondent has continuously maintained that
site as strictly non‑commercial.
Respondent's <freevideogamesonline.org> web site highlights the
work of talented programmers who recreate online versions of old classic video
games as part of their education.
Respondent provides various services, such as hosting of the games
through its web site, all without receiving any commercial reward whatsoever so that those
versions can be readily shared with a wide audience. The programmers are not compensated for their
efforts other than gaining artist credit for their creations. It is very common for individual game
designers to re‑create old video games which are not protected by
copyright and which are long since presumed to be in the public domain (see a
copy of a college advertisement, provided in Exhibit 11, which purports to
provide such an activity for its students).
The falling block puzzle game that appears on Respondent's <freetetris.org> web site was a
complete, independent re‑creation by its own programmers without reliance
on any specific coding, graphics or sounds whatsoever that form Complainant's
TETRIS game.
Respondent's <freetetris.org>
web site is more popular than Complainant’s own web site, such as, by virtue of
Respondent's web site appearing immediately above Complainant's web site on a
Google search results page for "tetris" (see a printout of that
results page appearing in Exhibit 9 to the Response), and also as evidenced by
comparative web site usage statistics provided by Alexa (a popular web site
comparison utility), compete.com and Google (all of which is also provided in
Exhibit 9 to the Response).
Respondent's experience with the game TETRIS is
confined to playing online versions of that game which were not created by
Complainant. An entire community of websites exists that
offer on‑line versions of TETRIS games not associated with Complainant
(see hard‑copy printouts of home pages from 25 such sites as provided in
Exhibit 5 to the Response).
Respondent had no knowledge of Complainant prior to its receiving a copy of the
Complaint, which as noted above was filed with the Forum on July 10, 2007, and
never received any prior communication from Complainant concerning
Complainant's assertion of rights in its TETRIS Marks and game.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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.
Trademark
Validity issues
Issues concerning
trademark validity, which Respondent here raises in the context of a lack of
registerability owing to genericness of the mark, are clearly not within the
purview of any UDRP proceeding and are best left for administrative and/or
judicial adjudication. Not only is doing
so outside the very limited and focused jurisdiction afforded to ICANN panels
under the Policy but moreover the summary and rather abbreviated nature of UDRP
proceedings totally precludes the establishment of a fully developed factual
record that underlies such a question.
UDRP panels cannot and
hence do not assess the validity of any federally registered trademark. Instead, such panels must, of necessity,
accord significant deference to decisions of that government body, namely the
USPTO, which, in the first instance not only possesses the requisite expertise
to assess such issues but also the federal statutory mandate to do so. It is simply not within the purview of any
UDRP panel to evaluate and review the judgment of the USPTO on such
questions. Moreover, even apart from those jurisdictional
concerns but clearly in view of the rather summary and abbreviated nature of
UDRP proceedings, UDRP panels are here too grossly ill‑equipped to deal
with an extensive factual inquiry that typically underlies an invalidity
determination. See, e.g., Gerber
Childrenswear Inc. v. David Webb, D2007‑0317 (WIPO April 24, 2007); Lockheed Martin Corporation v. The Skunkworx Custom Cycle D2004‑0824
(WIPO Jan. 18, 2005); Register.com, Inc. v.
Wolfgang Reile a/k/a RWG Internet and Marketing Rightway Gate Inc., et al, FA 208576 (Nat. Arb. Forum Jan. 27, 2004);
Hence, once the USPTO
has made a determination that a mark is registerable,
as it has here by issuing a registration to Complainant for its mark TETRIS, a
UDRP panel is not empowered to nor should it disturb that determination.
To the extent Respondent
wishes to challenge the USPTO’s determination that any of Complainant’s TETRIS
Marks has acquired sufficient distinctiveness upon which its federal trademark
registration can be based, and continues to be so distinctive of Complainant's
goods and services, Respondent may well have appropriate administrative and/or
judicial avenues available to it to do so, such as by filing an action in the
USPTO to cancel any of Complainant’s federal registrations or alternatively
instituting federal litigation. Absent
Respondent having done so and attained a final ruling that any of Complainant’s
federally registered TETRIS Marks is indeed generic, with respect to the goods
or services with which that mark is then used, and thus not susceptible of
continued federal registration, this Panel will simply defer, as it must, to
the USPTO’s determination implicit in its having granted various registrations,
i.e., that each of Complainant’s TETRIS Marks has acquired sufficient
distinctiveness and hence is not generic, and thus qualifies for continued
federal trademark protection and enjoys all the rights afforded thereby.
Therefore, given the inability of this Panel to address the invalidity issue raised by Respondent, then, as far as this proceeding is concerned, the Panel is not precluded from finding that the disputed domain name is either identical or confusingly similar to Complainant’s TETRIS Marks.
Identical and/or Confusingly Similar
The Panel finds that the disputed domain name is
confusingly similar to Complainant’s TETRIS Marks.
From a simple comparison of the name and the mark
TETRIS, no doubt exists that the disputed domain name is, for all practical
purposes, confusingly similar to that mark.
The only difference between the name and that mark is the addition of
the term "free," as a prefix and the appending of a gTLD (generic top
level domain) “.org” to the mark ‑‑ with the last being totally
irrelevant in assessing confusing similarity or identicality under
paragraph 4(a) of the Policy and thus ignored.
It is now very well‑established in UDRP
precedent, including numerous decisions previously rendered by this Panel, that
minor variations, such as adding short letter or number groups or even generic
words to a mark, are each insufficient in and of itself, when used in forming a
domain name that results from modifying the mark, to confer requisite and
sufficient distinctiveness to that name to avoid user confusion. Prepending the term "free" such
that the term “TETRIS” becomes in the domain name “freetetris” is clearly such
a minor variation. See, e.g., Associated
Bank Corp. v. Texas International Property
Associates, D2007‑0334 (WIPO June
28, 2007); Gerber Childrenswear
Inc. v. David Webb,. D2007‑0317
(WIPO April 24, 2007); SPX Corp. v. Hevun Diversified Corp.,. FA791657 (Nat. Arb. Forum Nov. 13, 2006); Google Inc. v. Burns, FA 726096 (Nat. Arb. Forum Aug. 16, 2006);
The Cheesecake Factory Inc. and The Cheesecake
Factory Assets Co., LLC v. Say
Cheesecake, D2005‑0766
(WIPO Sept. 12, 2005); Napster,
Inc. v. Vinscani, D2005‑0531 (WIPO July 19, 2005);
Caesars Entertainment Inc. v. Nova Internet Inc, D2005‑0411 (WIPO June 22, 2005);
Lockheed Martin Corporation v. The Skunkworx Custom Cycle,. D2004‑0824 (WIPO Jan. 18, 2005);
Lockheed Martin Corp. v. Deborah Teramani, D2004‑0836 (WIPO Dec. 1, 2004); and National Collegiate Athletic Assoc. v. Dusty
Brown, D2004‑0491 (WIPO Aug. 30, 2004); and Lane‑Labs USA, Inc. v. Powell
Productions, FA 155896 (Nat. Arb. Forum July 1, 2003). While a sufficient number of variations or
even one such significant variation itself made to a mark may suffice, under a
specific factual situation, to impart requisite distinctiveness to a resulting
domain name and there through dispel user confusion (see, e.g., Citgo Petroleum Corporation v. Richard Antinore, D2006‑1576 (WIPO March 14, 2007);
and CP
Films, Inc. v. Solar Lunar Performance Film, FA861127 (Nat. Arb. Forum Feb.6, 2007)),
such is clearly not the case here when both the name at issue and the mark are
viewed, as they must, in their entirety with respect to each other.
Therefore, the Panel finds that the disputed domain name <freetetris.org> is confusingly similar to Complainant’s TETRIS Marks as to cause confusion; hence, Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
The Panel, after very careful consideration
of the specific facts at hand, finds that Respondent has rights or legitimate
interests in the disputed domain name.
Paragraph 4(c) of the Policy states, in
pertinent part:
"Any of the following circumstances, in particular but without
limitation, if found by the Panel to be proved based on its evaluation of all
evidence presented, shall demonstrate your rights or legitimate interests to
the domain name ...
(1) 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."
First, it is
undisputed that Respondent registered and began use of the name on
December 30, 2005 and did not learn of this dispute until approximately a
year and a half later when Respondent was notified of the instant Complaint on
July 17, 2007.
Given this,
Respondent has satisfied the temporal threshold portion of paragraph 4(c)(1) that its use or demonstrable preparations for use of
the name (or a name corresponding thereto) start prior to Respondent's having
received notice of this dispute.
With that, the focus
shifts to whether Respondent's use of the name, which incorporated
Complainant's registered mark TETRIS, under the specific facts at issue, i.e.,
in connection with offering free access to a video game that from a thematic
perspective (i.e., being a similar falling block puzzle) resembled Complainant's
game, is bona fide.
While the resolution
of that issue is not clear cut ‑‑ with valid arguments having been
presented on both sides, the Panel is highly mindful of and ultimately guided
by the underlying narrowly‑defined scope and tenet of the Policy.
Specifically,
Respondent's use of the name in connection with its web site has been non‑commercial
since the inception of that site back in late December 2005 and so continues
unabated to the present date. The record
reflects, and Complainant does not contest, that Respondent did not receive any
pecuniary remuneration at any time from its site. The only direct benefit which Respondent
received was for its student programmers who receive artist credit for their
efforts in creating programs that replicated classic old video games. Though Complainant argues that somehow
Respondent received commercial benefit from its higher site ranking, in terms
of web visitors and placement on a Google "tetris" search page, the
Panel does not see ‑‑ nor has Complainant shown ‑‑ how
Respondent received any such benefit whatsoever from its site. At all times Respondent neither sought nor
actually received any financial return, whether directly or through a suitable
and proximate nexus to its higher site ranking.
Perhaps, if Respondent:
(a) had or actually manifested an intent to selling its web site to a third
party, or (b) even just allowed that party to commercially use the site, either
of which in a manner that would have been likely to cause financial injury to
Complainant, through exploitation of Internet user confusion, such as by
diverting sales and licensing revenue away from Complainant to that third‑party
or otherwise interfering with Complainant's business to its ultimate injury,
then having a higher search ranking might have induced the third‑party to
remit a higher price for the disputed domain name and Respondent's associated
web site, or at least for rights to post content to or commercially exploit
that site than would otherwise have possibly arisen. However, Respondent, from the inception of
its site in December 2005, never had nor manifested any such intent nor did it
allow any third party to use its site, let alone in a manner reasonably likely
to ultimately inflict any financial harm on Complainant ‑‑ a finding
which Complainant does not dispute.
Furthermore, although
Respondent's web site draws more visitors than does Complainants' web site, no
evidence exists of record as to how Respondent is actually financially or
otherwise commercially benefited by each incremental Internet user which its
site draws and what commercial damage, if any, Complainant suffers as a result.
Hence, Complainant's
argument, that Respondent, in spite of the completely non‑commercial
nature of its site, nevertheless gains commercial benefit, by virtue of its
higher web site ranking and visitor numbers, is simply too speculative, ill‑defined
and the possible commercial benefits flowing there from are too remote, as to
be persuasive to this Panel. The Panel
concludes that, under the specific facts here, Respondent's has used and
continues to use the disputed domain name in connection with a bona fide
offering of services.
While it is certainly
true that Respondent is using the trademarked term TETRIS in the disputed
domain name <freetetris.org>
and is providing access to a video game that arguably, at least in terms of its
genre, is probably similar to Complainant's video game, more than just that use
is needed to obtain relief under the Policy.
Questions of whether just use of a domain name and an accompanying
service infringes a trademark are simply insufficient to invoke the Policy and,
as with questions or trademark validity, are outside the purview of the very
limited jurisdiction of an UDRP proceeding.
Such questions are best left to and properly resolved through an
appropriate judicial forum. More
egregious conduct that collectively demonstrates, under the Policy, a lack of a
respondent's having sufficient rights or legitimate interests in the name at
issue as well as bad faith in terms of both use and registration, is required ‑‑
conduct that, in this Panel's view, is simply missing under the specific facts
here. See, e.g., Rudy Rojas v. Gary Davis, D2004‑1081
(WIPO Dec. 18, 2005); and Citigroup, Inc. v. Joseph Parvin, D2002‑0969 (WIPO May 12,
2003).
Thus, the Panel
concludes that Respondent has rights or legitimate interests in the disputed
domain name under paragraph 4(c)(1) of the Policy.
Registration and Use in Bad Faith
In light of the Panel’s findings that Respondent possesses rights or
legitimate interests in the disputed domain name under paragraph 4(c)(1) of the
Policy, then all issues relating to whether Respondent registered and used that
name in bad faith are moot. Hence, the
Panel declines Complainant's invitation to address those issues and thus
renders no opinion on any of those issues.
Inasmuch as Complainant has failed to meet its burden under paragraph 4(a)(2) of the Policy, therefore it has failed to establish a prima facie case for relief under paragraph 4(a).
DECISION
Consequently and in accordance with the
elements of the Policy, the relief sought by Complainant is hereby DENIED.
Peter L. Michaelson, Esq., Panelist
Dated: September 11, 2007
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