WildTangent, Inc. v. Whois Agent noreply@whoisprotect.com
Claim Number: FA1007001334679
Complainant is WildTangent,
Inc. (“Complainant”), represented by Matthew
D. Schneller, of Perkins Coie LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wildtangentgames.com>, registered with Moniker Online Services, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2010.
On July 16, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <wildtangentgames.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wildtangentgames.com. Also on July 16, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant markets a variety of locally installable and online games, advertising and marketing services, and related computer services.
Complainant owns registrations for the WILDTANGENT trademark with the United States Patent and Trademark Office (“USPTO”), including USPTO Reg. No. 2,789,218, issued December 2, 2003.
Respondent registered the <wildtangentgames.com> domain name on January 27, 2007.
The disputed domain name redirects Internet users to the <bamez.com> domain name, which lists pay-per-click links for sites offering computer games and similar products and services competing with the business of Complainant.
Respondent’s <wildtangentgames.com> domain name is confusingly similar to Complainant’s WILDTANGENT mark.
Respondent is not commonly known by the <wildtangentgames.com> domain name.
Respondent does not have any rights to or legitimate interests in the domain name <wildtangentgames.com>.
Respondent registered and uses the <wildtangentgames.com> disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) The same domain name was registered and is being used by Respondent in bad faith.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 a 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant owns trademark registrations for the WILDTANGENT mark with the USPTO. Registering a mark with the USPTO provides evidence that Complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i), even when Respondent lives or operates in a country other than where the mark is registered. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, it being sufficient that it can establish such rights in some jurisdiction).
Respondent’s <wildtangentgames.com> domain name is confusingly similar to Complainant’s WILDTANGENT mark because the domain appropriates Complainant’s full mark and adds only the descriptive term “games” and the generic top-level domain (“gTLD”) “.com.” These additions to Complainant’s mark in forming the contested domain name do not differentiate the domain from Complainant’s mark under Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005):
[T]he
addition of a term descriptive of Complainant’s business, the addition of a
hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish
Respondent’s domain name from Complainant’s mark.
See also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and of the generic top-level domain “.com”, were insufficient to distinguish a respondent’s <duracellbatteries.com> from a complainant’s DURACELL mark).
Thus, the Panel finds that Respondent’s <wildtangentgames.com> domain name is confusingly similar to Complainant’s WILDTANGENT mark under Policy ¶ 4(a)(i).
In order to comply with Policy ¶ 4(a)(ii),
Complainant must present a prima facie
case in support of its allegation that Respondent does not possess rights to or
legitimate interests in the disputed domain name. The burden to demonstrate rights and
legitimate interests then transfers to Respondent. See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum
Apr. 26, 2006):
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
Complainant has adequately met its prima facie burden. Respondent, however, has not satisfied its burden because it failed to respond to the Complaint. We are therefore entitled to conclude that Respondent does not have any rights to or legitimate interests in the disputed domain name and that Complainant’s allegations are true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given
Respondent’s failure to submit a substantive answer in a timely fashion, the
Panel accepts as true all of the allegations of the complaint.
See also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004): “Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”)
Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent does possess rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <wildtangentgames.com> domain name. Moreover, there is nothing in the record to suggest that Complainant has given permission for Respondent to use the WILDTANGENT mark in a domain name, and the WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the <wildtangentgames.com> domain name. We therefore conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name).
We also observe that Complainant asserts, without objection from Respondent, that Respondent’s domain name redirects Internet users to the <bamez.com> domain name, and that the <bamez.com> domain name is linked to a webpage displaying links to the websites of online game retailers, downloadable game sites, and providers of information on computer gaming, all of which compete with products and services offered by Complainant. In the circumstances here presented, we may comfortably presume that Respondent receives click-through, or similar, fees for the visits of Internet users to the resolving websites. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain name to operate a website containing links to commercial websites operating in competition with the business of a complainant, which the panel found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s <wildtangentgames.com>
domain name redirects Internet users to another domain name featuring links to
online and computer game websites competing with the business of Complainant. These links facilitate illicit competition
with Complainant’s business conducted under its WILDTANGENT mark. Respondent’s use of the contested domain name thus
disrupts Complainant’s business, which shows bad faith registration and use of
the subject domain name by Respondent under Policy ¶ 4(b)(iii). See Am. Airlines, Inc.
v.
Respondent
is referring Internet traffic that seeks out the … domain name to a competitor’s news site.
The Panel strongly finds that appropriating Complainant’s mark to refer
customers seeking Complainant to Complainant’s competitors is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii).
In addition, Respondent uses the <wildtangentgames.com> domain name to divert Internet users to a website displaying pay-per-click links to third-party websites that are not affiliated with, but rather compete with, the business of Complainant. Respondent evidently incorporated Complainant’s mark in the disputed domain name in order to attract Complainant’s intending customers, which Respondent then diverts to websites that profit Respondent via pay-per-click fees. This demonstrates bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites featuring services similar to those offered by that complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
[T]he
Panel finds the respondent is appropriating the complainant’s mark in a
confusingly similar domain name for commercial gain, which is evidence of bad
faith registration and use pursuant to Policy ¶4(b)(iv).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <wildtangentgames.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 25, 2010
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