Elorg Company, LLC and The Tetris Company, LLC v. 0x90
Claim Number: FA0205000114355
Complainants are Elorg Company, LLC and The Tetris Company, LLC, Wilmington, DE (hereinafter collectively, “Complainant”) represented by Glenn D. Bellamy, of Greenebaum, Doll & McDonald PLLC. Respondent is 0x90, Arlington, VA (“Respondent”) represented by Ari Goldberger of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <<tetris.net>>, registered with Tucows, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Professor Jeffrey M. Samuels, Panel Chair
Honorable Irving H. Perluss (Ret.)
Professor David Sorkin
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 20, 2002.
On May 21, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <<tetris.net>> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 2002 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@<tetris.net> by e-mail.
A timely Response was received and determined to be complete on July 1, 2002.
Complainant filed an Additional Response on July 5, 2002. It was received in a timely manner according to the Forum's Supplemental Rule No. 7.
Respondent, in its Response of July 1, 2002, elected to have the dispute decided by a three-member Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges that the second level domain name <tetris.net> is identical to the famous trademark TETRIS, in which Complainant has ownership and/or exclusive rights. Complainant is the owner of the <tetris.com> domain name and maintains a product-related site at that URL.
According to Complainant, Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name because the TETRIS mark is fanciful and has no non-trademark meaning. Complainant further alleges that before any notice to the Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the domain name <tetris.net> was initially not in connection with a bona fide offering of goods or services. Recently, however, Respondent has begun offering e-mail addresses using the <tetris.net> domain name for third-party subscribers. Complainant also maintains that Respondent has not been commonly known by the <tetris.net> domain name and has not acquired trademark rights in <tetris.net>. Complainant further maintains that Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain and is likely to confuse consumers or to dilute the mark in issue.
Complainant contends that the domain name should be considered as having been registered and as being used in bad faith because Respondent has engaged in a pattern of registering domain names that are identical to famous and popular marks and which, in many cases, differ from the trademark owners' official domain name only in the top level designation .com, .net, or.org in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name. In support of such contention, Complainant argues that Respondent has registered the following domain names, among others, for e-mail addresses: <bounce.net>, <bounty.net>, <pentium.net>, and <pez.com>.
By using the domain name <tetris.net>, Complainant urges, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or of a product or service on Respondent's web site.
Respondent does not dispute that the TETRIS mark and the disputed domain name are identical. It argues, instead, that it has rights and legitimate interests in the domain name and that the name was not registered and is not being used in bad faith.
Respondent argues that it has "rights and legitimate interests" in the <tetris.net> domain name because the name is offered as a vanity email address for fans of the TETRIS computer game. According to Respondent, "[i]t is well-established that the non-misleading use of a domain name for a fan-related service establishes a Respondent's legitimate interest in the domain name." Moreover, Respondent adds, the specific application of the domain name for a vanity email service has also been recognized to support a Respondent's legitimate interest. In support of this argument, Respondent cites the decision in Int’l Raelian Religion v. Mailbank.com Inc., D2000-1210 (WIPO Apr. 4, 2001), wherein it was stated:
The question of the legitimacy of vanity email services has already been addressed under the laws of the United States which is the home country for the Respondent. The holding of the leading case, Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999), effectively disposes of the argument, under U.S. law, that a vanity email service is per se not legitimate. We note that this issue has also been raised in a number of UDRP proceedings, e.g. Buhl Optical Co., supra (reaching same result with respect to surname "Buhl"), and we believe that our decision is consistent with the previous decisions that a vanity email service like Respondents can be a legitimate use.
With respect to the issue of "bad faith" registration and use, Respondent contends that none of the paragraph 4(b) elements has been established. According to Respondent, numerous Panels have held that the use of a trademark domain name for a vanity email service does not establish bad faith registration or use of a domain name. Respondent further argues that there is nothing on Respondent's web site implying that Complainant is the source of Respondent's email service or that it is affiliated or endorsed by Complainant in any way. As such, Respondent contends, there can be no bad faith use under paragraph 4(b)(iv) of the Policy.
B. Additional Submissions
In its "Additional Response," Complainant argues that Respondent is not operating a fan content site. Complainant contends that in each of the cases cited by Respondent relating to use of a mark for the domain name of a site, the Respondent was found to have acquired a legitimate interest in the domain name as a result of the related, legitimate, and fairly used content of the site. "This reasoning does not apply to the present case," Complainant urges.
Further, Complainant adds, in each case cited by Respondent relating to use of a mark for a vanity email service, the Respondent was found to have a legitimate interest in the domain name because the words involved were either generic terms having many non-trademark meanings or were merely surnames belonging to and used by many people in a non-trademark sense. Again, Complainant argues that "[t]his reasoning does not apply in the present case," inasmuch as TETRIS is a fanciful mark and "Respondent admits that it is using the domain name to attract fans to the famous TETRIS® game."
Based upon its review of the entire record, the Panel concludes unanimously that Complainant has established the elements necessary to be entitled to an order transferring the domain name to Complainant.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Respondent does not contest the fact that the domain name <tetris.net> is identical to the mark TETRIS, and the Panel agrees. The addition of the generic top level domain ".net" is of no legal consequence when conducting an "identical" analysis under paragraph 4(a)(1) of the Policy. See, e.g., Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that top level of domain name does not affect domain name for purpose of determining whether it is identical or confusingly similar).
The Panel further concludes that Complainant has established trademark rights in the TETRIS mark. The record establishes that Complainant Elorg Corp. is the owner of 90 worldwide registrations for the TETRIS mark and that the mark is exclusively licensed to The Tetris Company, LLC.
Rights or Legitimate Interests
It is clear, as noted by Complainant, that Respondent, itself, is not operating a fan site. As Respondent itself notes, the "disputed domain name is offered as a vanity email address for fans of the Tetris computer game." Thus, the cases cited by Respondent in support of its assertion that the non-misleading use of a domain name for a fan-related service establishes "rights or legitimate interests" are inapposite.
It is true, as Respondent notes, that a number of UDRP Panels have held that the use of a domain name for a vanity email service gave rise to legitimate rights or interests under the Policy. It is also true, of course, that each case must be decided on its own facts. While registration of a domain name corresponding to another's mark for purposes of offering a vanity email service may not be per se illegitimate, it follows that it is not per se legitimate either.
The Panel has reviewed the various cases cited by Respondent in support of its assertion that it has legitimate rights or interests in the <tetris.net> domain name. We conclude that the facts in each of those cases are sufficiently distinguishable from those in the instant matter and do not support Respondent's assertion of legitimate rights or interests in the <tetris.net> domain name.
For example, the Panel in Int’l Raelian Religion v. Mailbank.com Inc., supra, based its finding of legitimate rights or interests on the fact that the domain name in dispute, rael.com, corresponded to a common surname and is not singularly associated with Complainant as to give rise to a likelihood of confusion. The decision in Buhl Optical Co. v. Mailbank.com, Inc., D2000-1277 (WIPO Mar. 1, 2001), was based on the finding that "Buhl" is a bona fide surname and that Respondent was not using the domain name <buhl.com> in its trademark sense. Similarly, in the Avery Dennison litigation, the court found that Respondent was not using the domain names in issue in the trademark sense and was not attempting to "capitalize on the trademark value of the terms."
Here, by contrast, the evidence establishes that "tetris" is not merely a surname belonging to and used by many people in a non-trademark sense and that Respondent is using the <tetris.net> domain name in a trademark sense in an effort to attract fans of the game. Accordingly, the Panel finds that Respondent does not have legitimate rights or interests in the disputed domain name.
Registration and Use in Bad Faith
The Panel further concludes that the evidence establishes that the domain name in dispute was registered and is being used in bad faith. The evidence reveals that Respondent has engaged in a pattern of conduct designed to deprive trademark owners, including the instant Complainant, from reflecting their marks in a corresponding domain name, within the meaning of paragraph 4(b)(ii) of the Policy. As noted above, Respondent has registered a number of domain names incorporating such distinctive marks as PENTIUM, PEZ, BOUNTY, and BOUNCE.
The Panel also finds that Respondent, by using the domain name <tetris.net>, has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the site or of a product or service on the site, within the meaning of paragraph 4(b)(iv) of the Policy. It is clear to the Panel that Respondent registered the domain name <tetris.net> in a deliberate attempt to attract fans of the TETRIS game to Respondent's vanity email service and that such fans were likely attracted to such service in the mistaken belief that Complainant sponsored or was otherwise affiliated with the site. While Respondent cites First American Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001), in support of the proposition that there must be direct action by Complainant to cause confusion, in that case, the Panel noted that any confusion was a consequence of the widespread and popular adoption of the words "First American." There is no evidence of widespread and popular adoption of the word "tetris."
In view of the above, the Panel orders that the domain name <tetris.net> be transferred to Complainant.
Jeffrey M. Samuels
David Sorkin Irving H. Perluss
Dated: August 6, 2002
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