PopCap Games, Inc. v. Dalmarest Investments
Claim Number: FA1103001377278
Complainant is PopCap Games, Inc. (“Complainant”), represented by Lynne E. Graybeal of Perkins Coie LLP, Washington, USA. Respondent is Dalmarest Investments (“Respondent”), represented by Roger Smith of Dalmarest Investments, Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bejeweledbingo.net>, registered with TUCOWS, INC.
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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2011; the National Arbitration Forum received payment on March 14, 2011.
On March 11, 2011, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <bejeweledbingo.net> domain name is registered with TUCOWS, INC. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2011 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@bejeweledbingo.net. Also on March 14, 2011, 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.
A timely Response was received and determined to be complete on March 24, 2011.
An Additional Submission was received from Complainant on March 28, 2011, and that it was received in a timely manner according to The Forum's Supplemental Rule 7.
On March 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it owns and has rights in the BEJEWELED mark and various iterations thereof based on copyrights and common law trademark rights in its BEJEWELED and BEJEWELED BINGO brands of products and services dating back to at least as early as October 31, 2000 and August 10, 2010, respectively, and that, In addition to common law rights in its BEJEWELED BINGO mark, Complainant also owns at least twenty-two (22) applications and fifty-four (54) registrations for its BEJEWELED mark, including the iterations thereof. Complainant further contends that the BEJEWELED Mark is well known, as shown by Complainant's promotional efforts, major independent third-party services that track website visits, and statistics submitted. It is further contended by Complainant that the fact that Respondent’s Domain Name was registered on August 12, 2010 by Respondent, just two (2) days after Complainant launched its BEJEWELED BINGO Offerings is evidence of bad faith. Complainant contends that Respondent’s Domain Name is the same or confusingly similar to Complainant's <bejeweledbingo.com> Domain Name since the only difference between it and Respondent's <bejeweledbingo.net> Domain Name is the top-level domain extension and since Respondent's Domain Name merely adds the generic term "bingo" and the non-distinctive top-level domain extension ".net" to Complainant's well-known BEJEWELED Mark. Still further, it is contended by Complainant that Respondent is not commonly known by the name or nickname of the Domain Name, and Respondent is intentionally using Complainant's BEJEWELED Mark and Complainant's Word Art, Jewels, and Bingo Art without permission for the purpose of diverting Internet consumers for commercial gain, and thus, is not using the Domain Name in connection with a bona fide offering of goods or services, so that Respondent has no rights or legitimate interests in the Domain Name, nor is the Domain Name used in a noncommercial or legitimate fair use manner. Complainant also contends that evidence indicates that Respondent was aware of Complainant, its BEJEWELED Mark, and its BEJEWELED BINGO Domain when it registered the Domain Name and the website using the Domain Name was deliberately designed to attract Internet users for commercial gain by creating consumer confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Name and Infringing Website
B. Respondent
Respondent contends that the domain name is a Fair Use of the Complainant's trademark as a Fan Site for the game. Respondent also contends that its registration of the domain name does not hinder the Complainant from fully exploiting their game and has not disrupted the Complainant's business but to the contrary actually assists in sending players to the Complainant's licensee, Market Ace. Still further, it is contended by Respondent that its website using the Domain Name does not attempt to make users believe it is the official site for the game.
C. Additional Submissions
Complainant has answered Respondent’s contentions contending that Respondent is not an actual or implied licensee of Complainant’s intellectual property since Complainant’s license with it its distributor precludes sublicensing or transferring of rights to Respondent. Furthermore, it is contended that Respondent’s admission that it profits from the website to which the Domain Name resolves demonstrates that the domain is not being used in a noncommercial, Fair Use or good faith manner. Complainant also contends that the Domain and website to which the Domain Name resolves is not being used or promoted as a fan website.
Complainant has rights in the marks BEJEWELED and BEJEWELED BINGO. Respondent’s Domain is confusingly similar to the marks in which Complainant has rights. Respondent is not using the website to which the domain <bejeweledbingo.net> resolves in a fair use manner or as a fan site. The domain <bejeweledbingo.net> is being operated for profit using marks and trade dress of Complainant without its consent.
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 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; and
(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.
Complainant contends that its uses the BEJEWELED mark in connection with its electronic, downloadable, and online game and entertainment offerings. Complainant asserts that it should be found as having rights in the BEJEWELED mark through its multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,864,970 issued July 20, 2004) and elsewhere. Earlier panels have found that registrations with a federal trademark authority are sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that according to Policy ¶ 4(a)(i), Complainant has established its rights in the BEJEWELED mark through its registrations with the USPTO.
Complainant makes the argument that Respondent’s <bejeweledbingo.net> domain name is confusingly similar to Complainant’s BEJEWELED mark. Complainant contends that the disputed domain name contains Complainant’s entire BEJEWELED mark, adds the term “bingo,” which is descriptive of one of Complainant’s game offerings, and adds the generic top-level domain (“gTLD”) “.net.” Previous panels have found that the addition of a descriptive term and a gTLD do not sufficiently distinguish a disputed domain name from a complainant’s mark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that Respondent’s <bejeweledbingo.net> domain name is confusingly similar to Complainant’s BEJEWELED mark pursuant to Policy ¶ 4(a)(i).
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <bejeweledbingo.net> domain name and has not been authorized to use the BEJEWELED mark. Complainant provides the WHOIS information, identifying the domain name registrant as “Dalmarest Investments.” Further, the Panel finds that Respondent failed to submit evidence that it is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name and that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one 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 the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant contends that Respondent is using the disputed domain name to display click-through links and to profit off of a third-party affiliate program. The Panel finds that Respondent’s use of the <bejeweledbingo.net> domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant alleges that Respondent is creating a disruption of its business by displaying pay-per-click links that compete with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name constitutes evidence of bad faith registration and use according to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant makes the argument that Respondent attempts to commercially gain by creating confusion when it displays graphics which are nearly identical to Complainant’s. Complainant contends that Respondent likely profits when, after falsely attracting Internet users, those Internet users utilize the pay-per-click links at the disputed domain name. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Respondent contends that it using the disputed domain name as a fan site. However, the Panel finds that Respondent provides no information to support this contention while the use of the domain name to profit from generating of Internet traffic and click-through revenues evidences that the website to which the domain resolves is not being used as a fan site. See, With You Inc. v. Private, FA 0805001191869 (Nat. Arb. Forum July 7, 2008) (finding that a website existing solely for profit was neither a fan website nor a fair use) and Sandra Bullock v. Network Operations Center c/o Alberta Hot Rods, FA0906001269834 (Nat. Arb. Forum Aug. 10, 2009) (finding a website used to generate click-through revenues was neither a fair use or a bona fide offering of goods or services.)
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bejeweledbingo.net> domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: April 7, 2011
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