Ankama v. Fuzhou Tianmen
Touzi Zhixun Co., Ltd c/o
Claim Number: FA1006001330291
PARTIES
Complainant is Ankama (“Complainant”), represented by Todd Martin, of Fross Zelnick Lehrman & Zissu, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dofus.us>, registered with OnlineNIC, Inc. d/b/a china-channel.com.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 16, 2010;
the Forum received a hard copy of the Complaint on June 17, 2010.
On June 18, 2010, OnlineNIC,
Inc. d/b/a china-channel.com confirmed by e-mail to the Forum that
the <dofus.us>
domain name is registered with OnlineNIC, Inc. d/b/a china-channel.com and that Respondent is the current
registrant of the name. OnlineNIC,
Inc. d/b/a china-channel.com has verified that Respondent is bound by the
OnlineNIC, Inc. d/b/a
china-channel.com registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On June 22, 2010, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 12, 2010 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On July 14, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink
(Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <dofus.us> domain name is identical to Complainant’s DOFUS mark.
2.
Respondent does not have any rights or
legitimate interests in the <dofus.us>
domain name.
3.
Respondent registered and used the <dofus.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Ankama, is a software company that was founded in 2001. Complainant created the DOFUS online game, which is one of the most popular massive multiplayer online role playing games in history. Complainant first released the DOFUS online game to the public in 2003. In addition, Complainant holds numerous trademark registrations throughout the world for its DOFUS mark. Complainant has registered its DOFUS mark with both France’s Institut National de la Propriété Industrielle (e.g., Reg. No. 3,466,075 registered on July 16, 2003) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. registered on 3,492,895 registered on August 26, 2008).
Respondent registered the <dofus.us> domain name on August 30, 2006. The disputed domain name resolves to a website claiming to sell Complainant’s products. The website also prominently features Complainant’s DOFUS mark and logo.
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed representations
pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such
inferences it considers appropriate pursuant to Paragraph 14(b) of the
Rules. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”).
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; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or 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.
Identical and/or Confusingly Similar
Complainant asserts rights in the
DOFUS mark through its numerous registrations of the mark with France’s
Institut National de la Propriété Industrielle (e.g., Reg. No. 3,466,075 registered on July 16, 2003), as well as
the USPTO (e.g., Reg. No. registered
on 3,492,895 registered on August 26, 2008).
The Panel finds these registrations with international trademark
authorities sufficiently establish Complainant’s rights in the DOFUS mark
pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org,
FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had
established rights in the GOOGLE mark through its holding of numerous trademark
registrations around the world); see also
Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001)
(finding that the Policy does not require that the mark be registered in the
country in which the respondent operates; therefore it is sufficient that the
complainant can demonstrate a mark in some jurisdiction).
Complainant contends Respondent’s <dofus.us> domain name is
identical to its DOFUS mark. Respondent
replicates the DOFUS mark in its entirety and then merely adds the country-code
top-level domain (“ccTLD”) “.us” to Complainant’s mark in the disputed domain
name. The addition of a ccTLD does not
distinguish a domain name from a mark. See Tropar Mfg. Co. v. TSB, FA 127701
(Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the
country-code “.us” fails to add any distinguishing characteristic to the domain
name, the <tropar.us> domain name is identical to the complainant’s
TROPAR mark); see also Mattel, Inc. v.
Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name
[<Barbie.us>] is identical to the trademark “Barbie”, as it uses the
trademark in its entirety. The only difference is the addition of the country
code “us” which for this purpose is insufficient to distinguish the domain name
from the trademark.”). Accordingly, the
Panel finds Respondent’s <dofus.us>
domain name is identical to Complainant’s DOFUS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has
satisfied Policy ¶ 4(a)(i).
Rights
or Legitimate Interests
Pursuant to Policy
¶ 4(a)(ii), Complainant must first show Respondent lacks rights and legitimate
interests in the <dofus.us>
domain name. The burden then shifts to
Respondent to prove it has rights or legitimate interests in the disputed
domain name. The Panel may view
Respondent’s failure to submit a Response as evidence that Respondent lacks
rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima
facie case that [the] respondent lacks rights and legitimate interests in
the disputed domain names under [UDRP] ¶ 4(a)(ii), and then the burden shifts
to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to submit a
Response, the Panel will examine the record to determine if Respondent has
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <dofus.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant states
it is not connected or affiliated with Respondent. Complainant also claims it has not given
Respondent license or consent to use its DOFUS mark in a domain name. Additionally, the WHOIS information lists
“Fuzhou Tianmen Touzi Zhixun Co., Ltd c/o Chu Wei Wei” as the registrant of the
<dofus.us> domain name.
Without evidence to the contrary, the Panel finds Respondent is not commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See
Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)
(concluding that the respondent was not commonly known by the disputed domain
names where the WHOIS information, as well as all other information in the
record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name).
Complainant alleges
Respondent profits from its use of the disputed domain name by providing a
rogue marketplace for goods that can be used within the virtual world of
Complainant’s DOFUS game. Complainant
contends Respondent’s website competes with its legitimate product by offering
online players a way to cheat in its DOFUS game. Furthermore, screen shots of Respondent’s
resolving website show Complainant’s DOFUS mark and logo prominently displayed
throughout the site. Respondent also
purports to sell Complainant’s legitimate products on its website. As a result, Internet users may mistake
Respondent’s counterfeit products with Complainant’s official products. The Panel finds Respondent’s use of the <dofus.us> domain name to offer
counterfeit goods that compete with Complainant’s business does not qualify as
a bona fide offering of goods or
services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iv). See Hewlett-Packard
Co. v. Inversiones HP Milenium
In addition to
Complainant’s DOFUS mark and logo, Respondent’s website features images of
characters that closely resemble Complainant’s DOFUS game characters. Respondent’s site also contains text on the
site that states, “You are buying the dofus kamas from the game developers
directly, not from the resellers, no hacking, no cheating, and guarantee
work!” The Panel finds Respondent is attempting to pass itself off as Complainant
by imitating Complainant’s website, which is further evidence that Respondent
lacks rights and legitimate interests in the <dofus.us> domain name under Policy ¶4(a)(ii).
The Panel finds
Complainant has satisfied Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
The Panel finds
that Respondent registered
and uses the confusingly similar
<dofus.us> domain name to divert Internet users seeking
Complainant’s DOFUS game and products to its competing website. Therefore, the Panel finds this behavior
disrupts Complainant’s business, which constitutes bad faith registration and
use under Policy ¶ 4(b)(iii). See Jerie
v. Burian, FA
795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent
registered and used the <sportlivescore.com> domain name in order to
disrupt the complainant’s business under the LIVESCORE mark because the
respondent was maintaining a website in direct competition with the
complainant); see also DatingDirect.com Ltd. v. Aston,
FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is
appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to [UDRP] ¶ 4(b)(iii).”).
Furthermore,
Respondent’s confusingly similar domain name resolves to a site that claims to
offer products directly from the DOFUS game developers. The Panel presumes Respondent profits from
its use of the <dofus.us> domain
name through the sale of counterfeit DORFUS products. Consequently, the Panel finds Respondent
attempts to receive commercial gain by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of its website and products on its site.
Therefore, the Panel finds this behavior qualifies as registration and
use in bad faith under Policy ¶ 4(b)(iv).
See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles,
D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and
used the <wwfauction.com> domain name in bad faith because the name
resolved to a commercial website that the complainant’s customers were likely
to confuse with the source of the complainant’s products, especially because of
the respondent’s prominent use of the complainant’s logo on the site); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent
[used “HP” in its domain name] to benefit from the goodwill associated with
Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part,
to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated
by commercial gain, constitutes bad faith registration and use pursuant to
[UDRP] ¶ 4(b)(iv).”).
As previously discussed, Respondent’s website
prominently displays Complainant’s mark and logo, as well as images of
characters that closely resemble Complainant’s DOFUS game characters. The Panel finds that Respondent’s
attempt to pass itself off as Complainant constitutes bad faith use and
registration pursuant to Policy ¶ 4(a)(iii).
See Am. Int’l Group, Inc.
v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the
disputed domain name was registered and used in bad faith where the respondent
hosted a website that “duplicated Complainant’s mark and logo, giving every
appearance of being associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG mark”); see also Target Brands, Inc. v. JK
Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad
faith because the respondent not only registered Complainant’s famous TARGET
mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added
Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point
of being indistinguishable from the original.”).
The Panel finds
Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dofus.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 16, 2010
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page