Zynga Game Network Inc. v.
Danny Bling a/k/a www.Zynga.us
Claim Number: FA0906001265755
PARTIES
Complainant is Zynga Game Network Inc., (“Complainant”) represented by Martin Schwimmer, of Moses &
Singer LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zynga.us>, registered with Name.com.
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.
Bruce E. O’Connor, as Panelist.
PROCEDURAL HISTORY
This decision is being rendered
in accordance with the usTLD Dispute
Resolution Policy ("the Policy"), approved by the U.S. Department of
Commerce ("DOC") on February 21, 2002, the Rules for the usTLD
Dispute Resolution Policy ("the Rules") as adopted by the DOC, and
the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on May 29, 2009;
the Forum received a hard copy of the Complaint on June 1, 2009.
On June 1, 2009, Name.com confirmed by e-mail to the Forum that
the domain name <zynga.us> is registered with Name.com and that the Respondent is the current registrant of the
name. Name.com
has verified that Respondent is bound by the Name.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the Policy.
On June 11, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 1, 2009 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules.
A Response was received on
July 2, 2009; however the hard copy was not received prior to the
Response deadline. The National Arbitration Forum therefore does
not consider the Response to be in compliance with Paragraph 5(b) of the Rules.
Complainant submitted an Additional Submission to the National
Arbitration Forum on July 6, 2009, which was deemed timely in accordance with
Supplemental Rule 7.
On July 9, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Bruce E. O’Connor as Panelist.
Respondent submitted a letter to the National Arbitration Forum on July
10, 2009, which letter was sent to the Panel.
RELIEF SOUGHT
Complainant requests that the domain name at issue be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends:
Complainant coined the term
ZYNGA (the "Mark") and began common law use of it as a trademark
prior to Respondent's registration of the Domain name at issue. Zynga is the
largest social gaming company with more than 9.5 million daily users and 45
million monthly users. Zynga's games were a runaway success prior to the date
Respondent registered the domain name at issue, and they continue to be so. In
July 2008, there were over 1.3 million daily active users and 20 million
registered users. As of April 21, 2009,
Zynga became the largest application developer on Facebook.
Complainant has made trademark
use of the Mark since June 2007 and claimed that date as the date of first use
in the
Complainant registered the
domain name <zynga.com> on November 2, 2007, which it uses to host a web
site to communicate to the public about ZYNGA products. Complainant also makes use of the Mark when
it distributes games on social networks such as Facebook. These social networks are accessible
worldwide.
By virtue of the extensive online sales and advertising, the Mark has
become famous within social gaming circles.
Because Respondent's domain name at issue reflects Complainant's coined
and arbitrary Mark in its entirety, with the mere addition of the .us TLD
suffix, the domain name at issue is confusingly similar to Complainant's ZYNGA
Mark. Respondent uses the domain name at issue, which incorporates the Mark, to
direct Internet users to a for-profit web site that identifies Complainant by
name and purports to offer virtual poker chips, falsely claiming or implying
that such chips are compatible with and authorized by Complainant for use in
its successful Texas Hold 'Em poker game.
Respondent
purports to offer chips usable in Complainant's poker game.
Re-sale of Complainant's chips
is specifically prohibited by the Terms of Service of Complainant's games.
Complainant is not affiliated in any way with Respondent and has never
authorized Respondent to register or use the domain name at issue at issue or
the Mark. Respondent has no right or legitimate interest in the Mark, or in the domain name at issue. Respondent is not, nor
has ever been, a representative of Zynga, a licensee of Zynga or otherwise
authorized user of the Mark. Upon information and belief, Respondent is not
commonly known by the name "ZYNGA," or any variation thereof.
Respondent has no trademark rights in the Mark (and cannot acquire such).
It is indisputable that Respondent had
knowledge of the Mark prior to
Respondent's registration of the domain name at issue as Respondent refers to
Complainant. Complainant's adoption of
the Mark precedes Respondent's registration of the domain name at issue at
issue on March 14,2009, and as of that date the Mark and
Zynga's games had received widespread publicity and achieved widespread
popularity within social gaming circles. Respondent's use of the Mark on its
web site for the domain name at issue where it purports to sell poker chips
compatible with and authorized by Complainant for use in Complainant's
successful Texas Hold 'Em poker social game is proof of Respondent's knowledge
of the Mark prior to Respondent's registration of the domain name at issue.
Respondent infringes Zynga's
trademark rights. Respondent's web site is in English, offers dollar
denominated prices and is registered with a
There is no evidence that
Respondent is making a legitimate noncommercial or fair use of the domain name
at issue without intent for commercial gain, as the website at <zynga.us> is a for-profit site
offering unauthorized third-party virtual poker chips in a secondary
market. Such use does not constitute use
in connection with the bona fide offering of goods or services.
Respondent's use cannot be
fair use. Importantly, in compliance with applicable gaming law, Zynga does not
allow the redemption of chips for money or items of value. Zynga offers entertainment services, not
gambling services. Accordingly, there is no authorized secondary market for
ZYNGA poker chips. As mentioned above, no third party is allowed by Zynga to
offer chips under any circumstances, on the Internet or elsewhere. The only authorized method of obtaining ZYNGA
poker chips is by being a registered user of Zynga's poker game, and logging
into the personal account registered to the user seeking to obtain the poker
chips.
In fact, there is no effective
method of trading ZYNGA chips by users not logged onto the game, and no method
for users to exchange chips within the game other than by winning or losing a
poker hand. Hence, there can be no fair use of the term ZYNGA in connection
with the unauthorized sale of chips.
Respondent, with knowledge of Complainant's use of the Mark, is using
the domain name at issue to host Respondent's for-profit web site purporting to
offer unauthorized third-party virtual poker chips in a secondary market.
Complainant has no knowledge as to whether and how Respondent fulfills such
orders.
Respondent is using the domain
name at issue reflecting the Mark to sell unauthorized poker chips. The Respondent,
like the public, is well aware of the vast and valuable goodwill and reputation
represented and symbolized by the Mark. As used by Zynga, the Mark is
recognized and relied upon by online gaming consumers throughout the world to
identify and distinguish Zynga's games and services from the goods and services
of others. The domain name at issue is unmistakably similar to, and contains,
the Mark.
Respondent registered the
domain name at issue to falsely attract Internet users
searching for information about ZYNGA, to purchase
virtual poker chips from Zynga for use in Zynga online games, and/or to mislead
and confuse consumers as to the origin, source or sponsorship of the web site
and goods.
Given the lack of a legitimate
basis for Respondent's use of the Mark in the domain name at issue, the only
reasonable conclusion is that Respondent has acted with bad faith intent to
profit from Zynga's name and reputation.
Respondent's bad faith use of
the Domain name at issue is exemplified here by the following:
A. The domain name at issue
refers to Zynga and its business.
B. Respondent's use of clearly fraudulent and
misleading contact information when registering the domain name at issue, i.e.,
a false registrant address of "Somewhere in the bay of boom, lies the boy
of bling." and a false registrant e-mail address of
"ilove@zynga.com" is evidence of bad faith.
C. As a direct consequence of the Respondent's
conduct, the public is and will be misled as to the source, sponsorship or
origin of the information and products offered on the links connected to a web
site using the Domain name at issue. The Respondent's purposefully deceptive
use of the domain name at issue seeks to profit from this consumer confusion or
mistake and constitutes bad faith use of the Domain name at issue.
B. Respondent
Respondent contends:
All charges are denied.
Firstly, none of the exhibits mentioned paragraph 4 in the notice have
been attached and delivered which leaves Respondent with no option but to deny
their existence or validity and can be only dismissed as inadmissible evidence
which exists only in the minds of Complainant.
Respondent contends that the allegation that Respondent is a for-profit
organization involved in sale of chips fails. The sole purpose of Respondent’s
website is to encourage people to take up this game and to help them develop
good understanding of the same rather then indulge in sale of chips as falsely
alleged by Complainant.
Respondent claims complete ignorance of and content [of] that contention
put forwarded by Complainant in claiming that “Zynga” is a known trademark is
false and subject to challenge. Respondent pleads absolute ignorance to the
claim that Respondent had prior knowledge of Complainant’s trademark. Also, as
it has been brought to Complainant’s notice Zynga is not a registered trademark
in
Respondent’s nexus with United States is well established by the fact
that Respondent accept monies in US dollars as it also accepted as a world-wide
currency making it easier for Respondent’s world-wise user base to avail
Respondent’s services. Respondent’s website is also in US English thus putting
to rest all queries on Respondent’s rightful nexus with
Respondent refutes Complainant’s allegation [that] Respondent is
indulging in unauthorized sale of chips as mentioned in above paragraph
Respondent’s sole purpose is to disburse information, tutorials and guides that
can help people understand and learn the game better and not to sell poker
chips is [sic] reiterated by Complainant.
Respondent has consistently maintained that Respondent does not indulge
in sale of chips.
Respondent does not indulge in any secondary market sale of chips, at
the most Respondent acts as facilitator between different poker players who
play the game on not only on Facebook and other social networking sites run by
Zynga but also through other mediums and other providers of poker game
services. Hence, to argue that Respondent’s website is specifically targeted at
Zynga is deceptive and undermines the real purpose of our website by
interpreting its usage as the one restricted to Zynga.
A plain reading of U.S. Lanham Act, section 43(d) indicates that if the
site is a "fair use" of the trademark holder's domain name, without
any intention of "bad faith profit," the registrant will prevail.
Hence, we believe that Respondent’s website is committed to fair-use of its
content and is in good-faith as a genuine provider of know-how of the game of
poker it cannot be brought under the provisions of cyber-squatting as envisaged
in the Act.
To demonstrate Respondent’s genuine intentions
and good-faith Respondent is willing to offer the domain name at issue for a
price of USD __________. In order to avoid unnecessary legal hassles for both
of us Respondent proposes an out of court settlement of the issue, subject to
reserving Respondent’s right to challenge Complainant’s filing in National
Arbitration Forum. This letter and this offer are strictly without prejudice to
Respondent’s other legal rights in
C. Additional Submission of Complainant
As set forth in the
Complaint, Respondent used the domain name at issue to sell poker chips
allegedly compatible with Complainant’s popular poker game. Now that
Complainant has brought this action, Respondent has hastily shifted its poker
chip business to a different site and is using the domain name at issue in its
response papers and brazenly relies on its (supposedly non-existent) commercial
activities (namely dollar-denominated poker chip sales) to allege compliance
with the .usTLD nexus requirements.
The Response is
further evidence of Respondent's bad faith registration and use of the domain
name at issue.
(i) Respondent brazenly uses its "Response" to offer to sell
the domain name at issue to Complainant for an unspecified dollar amount. The
blank dollar figure is evidence of his bad faith, as had Respondent been
prepared to sell the domain name at issue (lawfully) for the registration fee,
it would have no need to leave the dollar amount blank.
(ii) Respondent misrepresents the nature of its use of the domain name
at issue. Now that the Complaint has
been filed, Respondent alleges (without evidence) that it does not sell chips.
He fails to indicate that the most prominent
content on its new website using the domain name at issue is the URL to
<dannybling.com>, its new for-profit chip selling site.
Respondent offers no evidence and can offer no evidence to substantiate a
claim that Respondent is making a legitimate non-commercial or fair use of the
domain name at issue without intent for commercial gain.
(i) The web site using the domain name at issue was a for-profit site
and used to offer unauthorized third-party virtual poker chips in a secondary
market and, post-Complaint, was hastily converted to merely redirect to promote
Respondent's new chip selling site. Such use does not constitute use in
connection with the bona fide offering of goods or services.
Trademark laws do not permit Respondent's use of the Mark and the domain name at issue.
(i) Respondent asserts that it accepts US funds. In admitting to its commercial activity in
the
(ii) Although Respondent's selection of a .us domain name and its
admission as to its U.S.-targeted commercial activities demonstrates that this
is a U.S. matter, with regard to Respondent's reference to Indian trademark
law, Complainant notes that Respondent's adoption of the Mark evidences that
Zynga's reputation extends to India and the Mark would receive common law
trademark protection and protection under India's passing-off statute.
The Response is insufficient under the Rules and the Supplemental Rules.
(i) the Response fails to satisfy Rule 5(a) of the Supplemental
Rules for, among other reasons, it fails to include all elements listed in
Paragraph 5(c) of the Rules, namely, it fails to specifically respond to the
statements and allegations contained in the Complaint.
D.
Additional Submission of Respondent
In its further letter, Respondent states that
it would like to surrender the domain name at issue to Complainant. Respondent states that its offer is in good
faith, understanding the importance of the domain name to Complainant and as a token
of its appreciation to Complainant’s products.
Respondent, however, continues to deny the contentions of Complainant.
FINDINGS
The
certification required by ¶ 3(b)(xiv) of the Rules is
the minimum to demonstrate the admissibility of the factual contentions made by
a complainant, and the certification required by ¶ 5(c)(viii) of the Rules
is the minimum to demonstrate the admissibility of the factual contentions made
by a respondent. Without certification, a Panel may
choose not to consider any factual statements, even in the case of pro se parties.
Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents and
declarations. The Panel finds that the
factual contentions made by Complainant are admissible and will be given weight
as appropriate.
Respondent has not provided the required ¶ 5(c)(viii) certification, and has provided no additional
documents and declarations, in either the Response or the Additional
Submission. Also, Respondent has not
provided hard copies of its Response as required by ¶ 5(b) of the Rules. Given these failings, the Panel declines to
consider any factual or legal contentions in the Response or the Additional
Submission and draws all inferences favorable to Complainant in accordance with
the Panel’s powers under ¶ 14(b) of the Rules.
DISCUSSION
Paragraph 15(a) of 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.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Where Respondent has not contested the transfer of
the disputed domain name, but instead agrees to transfer the domain name in
question to Complainant, the Panel may forego the traditional UDRP analysis and
order an immediate transfer of the domain
name in issue.
Thus, the Panel will
not rule on Complainant’s contentions of violations by Respondent of ¶ 4(a) of
the Policy, and will accept the request of Respondent. See Boehringer Ingelheim Int’l GmbH v.
Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003)
(transferring the domain name registration where the respondent stipulated to
the transfer); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA
212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both
asked for the domain name to be transferred to the Complainant . . . Since
the requests of the parties in this case are identical, the Panel has no scope
to do anything other than to recognize the common request, and it has no
mandate to make findings of fact or of compliance (or not) with the Policy.”); Disney
Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005)
(“[U]nder such circumstances, where Respondent has agreed to comply with
Complainant’s request, the Panel felt it to be expedient and judicial to forego
the traditional UDRP analysis and order the transfer of the domain names.”); Citigroup Inc. v. Texas International Property Associates NA NA, FA0806001210904 (Nat. Arb. Forum
August 5, 2008) (“Judicial economy dictates that the Panel should simply
proceed to its decision since there is no dispute between the parties … A panel’s only
purpose in rendering substantive Paragraph 4(a) findings is relegated to that
end, and that end alone. What amounts to advisory opinions are not authorized
by the Policy, Rules, or otherwise.”).
DECISION
Respondent having consented to the transfer, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered that the <zynga.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. O’Connor, Panelist
Dated: July 23, 2009
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