PopCap Games, Inc. v Patrick Duffy

national arbitration forum

DECISION

PopCap Games, Inc. v. Patrick Duffy

Claim Number: FA1105001388271

PARTIES

Complainant is PopCap Games, Inc. (“Complainant”), represented by Lynne E. Graybeal of Perkins Coie LLP, Washington, USA. Respondent is Patrick Duffy (“Respondent”), Great Britain.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bejeweledbingozero.com>, registered with TUCOWS, INC.

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.

Mr. Maninder Singh as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2011; the National Arbitration Forum received payment on May 12, 2011.

On May 11, 2011, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <bejeweledbingozero.com> 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 May 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@bejeweledbingozero.com. Also on May 12, 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 June 2, 2011.

On June 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name registration be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

The Complainant in its complaint has, inter-alia, raised the following contentions:-

· Complainant is stated to be a Washington based corporation set-up and started to use the mark “BEJEWELED” for its inter-state commerce in 2000 with place of business at Seattle, Washington.

· The Complainant – PopCap Games, Inc. Washington (USA) in its Complaint has contended that it owns copyrights and common law trademark rights in its “BEJEWELED” and “BEJEWELED BINGO” brands of products and services as early as since 31.10.2000 and 10.08.2010 respectively. The Complainant also claims that in addition to owning the above marks, it also owns 22 applications and 54 registrations for the marks BEJEWELED and BEJEWELED BINGO since 05.03.2003.

· It is the contention of the complainant that its mark is used for a wide variety of entertaining products and services including electronic, online, downloadable and interactive games, games of chance, video games, arcade games, action games as well as with other entertainment mediums, such as scratch cards, lottery cards, and game cards. Complainant claims that it offers games of chance, such as bingo games and related gaming products and services, branded under the BEJEWELED BINGO mark. To substantiate, the Complainant has relied upon Annex.7-9 in this regard, attached with the present Complainant.

· Complainant contends that its BEJEWELED BING offerings are available to Internet users worldwide except to Internet users of Antigua/Barbuda, Austria, Canada, France, Greece, Hongkong, Malta, the Netherlands, Pakistan, Portugal, Switzerland, Turkey and USA.

· In order to substantiate its contention that its BEJEWELED mark is well-known and that the promotional efforts and major independent third party services that track website visits (Annex.8-12), Complainant claims that –

Ø It uses the BEJEWELED mark extensively on its primary website, at the domain name “popcap.com”;

Ø It uses the BEJEWELED mark extensively on its BEJEWELED specific websites located at the domain names “bejeweled.com” and “bejeweledbingo.com”.

· Complainant claims that according to “alexa.com” estimates, its website is amongst 2100 most popular websites in the world and amongst 1200 most popular websites in the USA. To substantiate, Complainant has relied upon the decision of this Forum in SimSlots Inc. v. Peterson, FA 864682 (Nat. Arb. Forum Jan. 29, 2007) holding that the evidence of popularity of Complainant’s mark and website from alexa.com (in that case) ranked only 79,762th means that “Respondent must put forth strong evidence to prevail” on any claim of legitimate interest in the domain name. Compete.com ranks Complainant’s website “PopCop” as the 437^th most popular rated website with over 12 million visits and over 3-½ million unique visitors in January 2011 alone.

· Complainant, while relying on Annex.9, further contends that its BEJEWELED offerings are –

Ø Estimated 500 million users worldwide;

Ø 50 million unit sales for BEJEWELED offerings between 2001 & 2009.

Ø 150 million mobile phones deploying BEJEWELED offerings between

2001 and 2009

Ø Revenue generated by BEJEWELED offerings between 2004 and 2009

was US $ 76,904,943 –

- 2004 - $ 2,571,791

- 2005 - $ 7,906,328

- 2006 - $ 11,118,824

- 2007 - $ 12,937,000

- 2008 - $ 18,555,000

- 2009 - $ 23,816,000

Ø Estimated and projected revenues to be generated by BEJEWELED offerings between 2010 & 2011 is $ 82,303,000

- 2010 - $38,798,000 (forecast based on revenue as of August

2010 and assumptions for September through

December 2010)

- 2011 - $ 43,505,000 (forecast based on assumptions for

January through December 2011)

· It is the contention of Complainant that its BEJEWELED offerings have won prestigious awards and accolades from various agencies and positive reviews in major newspapers and magazines. Besides citing Annexures 13 & 14 to substantiate its claim that its mark is famous and well known, Complainant has also relied upon the decision of this Forum in G.D. Searle & Co. v. Woodrow Bridges, FA 114708 (Nat. Arb. Forum Aug. 9, 2002) as an evidence of reviews in the New York Times and Forbes cited in the Panel’s finding in that case that CELEBREX mark had attained “a substantial amount of notoriety”.

· It is also the contention of the Complainant that it has a distribution agreement with Profitable Play Limited, <gamesyscorporate.com/ profitable_play.phb> (for short “PPL”) for hosting Complainant’s BEJEWELED BINGO online wagering game in select geographic locations, at its online gaming channel, JackPotJoy – <jackpotjoy.com/tv/welcome9/>.

· It is the contention of the Complainant that neither it nor PPL & JackPotJoy have ever, individually or collectively authorized Respondent to use Complainant’s mark/domain name in any manner. Complainant further claims that the terms of its distribution agreement with PPL are confidential and the rights which have been conferred upon PPL and its affiliates through the said agreement are non-transfer and non-sublicensable and does not mention the name of Respondent as an affiliated entity of PPL in the said agreement.

· It is the contention of the Complainant that it had contacted Respondent on 23.02.2011 and 15.03.2011 to impress upon the Respondent about the rights of the Complainant in the mark and BEJEWELED BINGO offerings, to which, according to Complainant, it has not received any response from Respondent till today.

· It is the contention of the Complainant that the disputed domain name was registered by Respondent on 07.12.2010, i.e. about 4 months after Complainant has launched its BEJEWELED BINGO offerings. To substantiate, besides relying upon Annexures 5, 9 & 14 to the present Complaint, the Complainant has relied upon the decision of this Forum in AOL LLC v. WhoisGuard, FA 1040222 (Nat. Arb. Forum, Sept. 4, 2007) holding that the registration of disputed domain name in that Complainant – <myeaddress.org> shortly after complainant announced its MY EADDRESS mark and services in a press release constituted “opportunistic bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”

· Complainant contends that the website to which the disputed domain name resolves is completely undeveloped and upon clicking it the message which appears in bold and black letters on a white background is that “This page has been reserved for future use”. In this regard, Complainant has relied upon Annex. 19 to the Complaint.

· The Complainant while placing reliance on Annexures 5 & 10 to the Complainant, contends that the only difference between Respondent’s disputed domain name “bejeweledbingozero.com” and Complainant’s “bejeweledbingo.com” is the addition of word “zero” to the Respondent’s second level domain. Complainant further claims that Respondent is the registrant of at least 21 domain names, including the disputed domain name. In 17 domain name portfolios of Respondent it uses the word “zero” at the second level and in 18 of the domain names it uses the term “bingo” at the second level domain names.

· Complainant further contends that Respondent has registered at least 6 domain names with the addition of the term “zero” to a third party’s trademark and “bingo” domain name. Complainant has rendered the following examples to substantiate its contention : -

(i) Complainant’s Domain : bejeweledbingo.com

Complainant’s offerings : Bingo and related services

Respondent’s Zero Domain : bejeweledbingozero.com

Respondent’s Website content : “This page has been reserved for

future use”

(ii) Thomas Estates Ltd.’s Domain : beaconbingo.com

Thomas Estates Ltd.’s offerings : Bingo and related services

Thomas Estates Ltd.’s Trademark BECON BINGO IN Class 41 in

Registration : the United Kingdom

Respondent’s Zero Domain : beconbingozero.com

Respondent’s Website content : “This page has been reserved for

future use”

(iii) Private Owner’s Domain : bingogala.com

bingogala.com’s offerings : Bingo and related services

Gala Group Investments Limited’s Trademark Registrations :

· GALA CLUBS Logo in Classes 41 and 42 in the United Kingdom

· GALA CLUBS Colour Logo Horizontal in Classes 41 and 42 in the United Kingdom

· GALA CLUBS Colour Logo Vertical in Classes 41 and 42 in the United Kingdom

Respondent’s Zero Domain : bingogalazero.com

Respondent’s Website content : “This page has been reserved for

future use”

(iv) Game Village Ltd.’s Domain : gamevillage.com

Game Village Ltd.’s offerings : Bingo and related services

Game Village Ltd.’s Inactive Trademark Filings :

· GAMEVILLAGE in Class 41 in the United Kingdom

· GAMEVILLAGE in Classes 9, 16 and 41 in the European Union

Respondent’s Zero Domain : gamevillagezero.com

Respondent’s Website content : “This page has been reserved for

future use”

(v) WHG(International) Ltd.’s Domain : rubybingo.com

WHG(International) Ltd.’s offerings: Bingo and related services

Respondent’s Zero Domain : rubybingozero.com

Respondent’s Website content : “This page has been reserved for

future use”

(vi) Crown Bingo Ltd.’s Domain : crownbingo.com

Crown Bingo Ltd.’s offerings : Bingo and related services

Crown Bingo Ltd.’s Trademark Registrations :

CROWNBINGO.COM Logo in Class 41 in the United Kingdom

Respondent’s Zero Domain : crownbingozero.com

Respondent’s Website content : “This page has been reserved for

future use”

· With a view to show that the disputed domain name is confusingly similar to Complainant’s BEJEWELED and BEJEWELED BINGO marks, Complainant in its grounds for complainant contends that it is using BEJEWELED mark continuously since 2000, i.e. a decade prior to the date of registration of the domain name in 2010.

· Complainant claims that it has 54 registrations for its BEJEWELED mark in connection with its offerings constitute prima facie evidence of validity of Complainant’s rights in the mark. To substantiate, Complainant has relied upon the decision of WIPO in – Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002). A domain name is said to be identical or confusingly similar when it fully incorporates the disputed mark. In this regard the Complainant has relied upon the following 2 decisions : -

(i) Moneytree, Inc. v. Cyberwire, LLC, FA 1059480 (Nat. Arb. Forum, Sept. 28, 2007) (holding that adding a generic term for complainant’s offerings and/or a top-level domain is irrelevant to whether a domain name is likely to cause confusion with complainant’s trademark).

(ii) PepsiCo, Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding that domain names such as pepsiadventure.net and pepsitennis.com are confusingly similar to complainant’s PEPSI mark because they “incorporate[ed the] trademark in its entirety”).

Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:

· The Complainant further contends that respondent’s Domain Name merely adds the term “zero” to Complainant’s well-known BEJEWELED BINGO Mark, which is descriptive of Complainant’s Bingo 90 offerings because each round of Bingo 90 begins when the counter resets to “zero”. In fact, even the top-level domain name extension between Complainant’s BEJEWELED BINGO domain name and Respondent’s domain name are identical. Complaint argues that in Moneytree and PepsiCo, Respondent’s domain name were essentially identical to Complainant’s mark and BEJEWELED BINGO domain. Hence it is highly likely that the disputed domain name and respondent’s infringing website are receiving Internet traffic seeking Complainant, its offerings and its websites.

· Complainant further argues that the identical nature of the Complainant’s domain name with respondent’s domain name BEJEWELED BINGO increases the possibility of Internet users getting confused regarding complainant’s potential ownership, sponsorship or affiliation with the infringing website. In order to substantiate its argument, the Complainant has relied upon the decision of this Forum in Disney Enter, Inc. v. Nevis Domains – FA0606000739876 (Nat. Arb. Forum, Aug. 11, 2006 – holding that confusing similarity between complainant’s domains and respondent’s disneychannelgames.com domain increased the possibility that Internet users would believe respondent’s website was affiliated with or sponsored by complainant.

Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name:

· The Complainant contends that the respondent is not commonly known by the name or nickname of the disputed domain name. Respondent’s WHOIS information in connection with the disputed domain name identifies respondent as “Patrick Duffy”, its administrative contact as “Pugh, Chris support@avihosts.com” and its technical contact as “Duffy, Patrick, Patrick@thepalaces.com. Respondent is using Complainant’s BEJEWELED and BEJEWELED BINGO marks without permission. Further, Respondent’s failure to acknowledge or respond to Complainant’s 23.2.11 and 15.3.11 notices indicates that respondent is willfully infringing Complainant’s marks.

· Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor in a noncommercial or legitimate fair use manner. Rather, the facts indicate that Respondent is not making any use of the Domain Name or Infringing website as highlighted by the reservation notice on the infringing website, as is observed from its reservation notice on the infringing website. Such inactivity (non-use) of the disputed domain name for about 4 months after it was registered, shows that the respondent is not engaged in a bona fide offering of goods or services. In this regard Complainant has placed reliance on the following decisions : -

(i) Popular Enterprises, LLC v. Jang, FA 811921 (Nat. Arb. Forum Nov. 16, 2006) (holding that “Respondent’s WHOIS information does not suggest that respondent is commonly known by the “ntester.com” domain name.”);

(ii) Daimler AG v. Scroggie, FA 1323955 (Nat. Arb. Forum July 20,2010) (holding that "under construction" page is neither a bona fide offering nor a legitimate noncommercial or fair use);

(iii) Google Inc. v. Noori net, FA 1311521 (Nat. Arb. Forum Apr. 29, 2010) (holding that failure to make an active use of a domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy f 4(c)(iii));

(iv) Hewlett-Packard Co. v. Ravne, FA 101465 (Nat. Arb. Forum Dec. 17,2001) (holding that "under construction" page does not support a claim of right or legitimate interest under the Policy).

Contentions regarding bad faith registration and use of the disputed domain name by Respondent :

· Complainant alleges that inability of Internet users to reach its website under a domain name completely appropriating Complainant's Mark indicates that Respondent has registered and is using the disputed domain name in bad faith. Respondent was aware of Complainant’s BEJEWELED Mark and its BEJEWELED BINGO Domain name when it had registered the domain name.

· Complainant claims that its BEJEWELED Mark is unique and widely known in the gaming field. The disputed domain name is identical to Complainant's BEJEWELED BINGO domain name except the addition of "zero." Complainant further contends that "zero" is descriptive in connection with BINGO 90 offerings because it describes when new BINGO 90 games begin. Hence, all contentions contending that Respondent has devised the disputed domain name on its own, without the knowledge of Complainant's BEJEWELED Marks or BEJEWELED BINGO Offerings, are untenable.

· Complainant alleges that Respondent's bad faith registration and use is further established by the fact that it is passively holding the domain name. Complainant contends that various panels have held bad faith registration / use when it has found that a registrant has failed to make an active use of a registered domain name.

Complainant further contends that Respondent's bad faith actions are not limited to its misappropriation of Complainant's Mark, nor limited to a single instance of infringement, but Respondent has engaged itself in a systematic and blatant pattern of registering domains featuring third-party trademarks. Many of these domain names are identical to the third-party's domain name, except for the addition of the term "zero." In this regard, Complainant has relied upon Annexes 20, 2l & 27, wherein Respondent appears to have been registering an entire portfolio of domains with the pattern : “trademark”zero.com. Such systematic domain infringement alone would be sufficient to demonstrate that Respondent has registered and is using the disputed domain name in bad faith.

· With a view to show registration and use of the disputed domain name by Respondent to be in bad faith, the Complainant has relied upon the following decisions : -

(i) AutoZone Parts. Inc. v. Edirisooriva, FA 1327533 (Nat. Arb. Forum July 8, 2010) (The fact that Respondent registered the disputed domain name within 4 months after Complainant's press release regarding the launch of its BEJEWELED BINGO Offerings is clear evidence of Respondent's bad faith).

(ii) AOL LLC v. WhoisGuard, FA 1040222 (Nat. Arb. Forum Sept. 4, 2007) (“In this case, registration of “myeaddress.org” domain shortly after complainant announced its MY EADDRESS mark and services in a press release constituted "opportunistic bad faith registration and use pursuant to Policy 4(a)(iii)");

(iii) 3MCo. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (In this case, Respondent's registration of the disputed domain name on the same day that complainant issued a press release regarding the acquisition constitutes opportunistic bad faith).

(iv) Cable News Network LP. LLP v. Elie Khouri , FA 117876 (Nat. Arb. Forum Dec. 16, 2002) (holding bad faith registration and use, given the fame of complainant's CNN Mark: it was " absolutely inconceivable to this panel that the [respondents... were unaware of the complainant's CNN Mark when the former registered the disputed domain names").

(v) Google Inc., FA 1311521 (holding that "the Panel finds the failure of Respondent's “googleplace.com” domain name to resolve to an active website supports findings of bad faith registration and use");

(vi) Daimler AG, FA 1323955 (wherein the Panel while discussing the respondent's "under construction" notice, has held that "Respondent's failure to make an active use of the disputed domain name is evidence of Respondent's bad faith registration and use").

(vii) Nature's Sunshine Products. Inc. v. Nadeem Oadir, FA 1314890 (Nat. Arb. Forum Apr. 30, 2010) (In this case, the pattern of bad faith registration of domain names of well-known parties was considered to be deemed evidence of bad faith by Panel);

(viii) Charming Shoppes. Inc. v Kiansu Thoi, FA 1347369 (Nat. Arb. Forum Nov. 2,2010) (holding that prior registrations of at least two domain names which were confusingly similar to third-party marks deemed evidence of registration and use in bad faith);

B. Respondent

The respondent in his response to the Complaint has, inter-alia, submitted the following : -

· The disputed domain name in question has little value to us so you are welcome to take it if you wish in exchange for offering the cost of the arbitration procedure as a donation to The Little Sisters of The Poor - England (Registered Charity No: 234434) - next time you may consider asking before demanding and threatening.

Respondent submits that it did not have any intent with the domain name to hurt PopCap's trademark but rather to protect Respondent’s own current and future BINGO offerings from companies which have not yet even been licensed by the UK Gambling Commission.

· Respondent further submitted that if PopCap (complainant) feels that the disputed domain name alone would attract Internet-traffic and customers looking for its offerings then as to what had prevented them to register the domain name?

· Respondent has rights and interests to protect its own BINGO offerings (especially Zero Bingo offerings) and thinking two steps ahead is a very sensible choice, and to avoid similar situations may be a good advise to the Complainant too.

· With regard to using BEJEWELED trade mark, Respondent submits that #24 explicitly states that Respondent is Not Using (what is absolutely true) the domain name and the trademark and such statements to be supported by court decision not by personal opinions based on previous decisions by a Forum.

FINDINGS

The Panel finds that the use of the domain name “bejeweledbingozero.com” by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.

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 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.

Identical and/or Confusingly Similar

· Complainant provides evidence that it owns numerous trademark registrations worldwide for its BEJEWELED mark, including those with the following governmental trademark offices:

(i) Intellectual Property Australia (“IPA”) (e.g., Reg. No. WO 851 603 issued May 3, 2005);

(ii) Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA660323 issued March 7, 2006);

(iii) European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. WO 924 813 issued March 29, 2007); and

(iv) United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,864,970 issued July 20, 2004).

· The Panel finds that Complainant’s submissions of various trademark registrations for its BEJEWELED mark worldwide effectively establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). The Panel observes that this Forum in its decisions in –

(i) Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (holding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy 4(a)(i));

(ii) Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

· Complainant further argues that while it does not own a valid trademark registration with any governmental agencies for its BEJEWELED BINGO mark, that it possesses common law rights in its mark. The Panel observes that Complainant need not own a trademark registration in a mark to establish rights under Policy ¶ 4(a)(i), so long as Complainant can establish that its mark has achieved secondary meaning. The Panel in this regard found the following decisions to be relevant –

(i) SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (holding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist);

(ii) Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

· Complainant contends that it began offering gaming services under the BEJEWELED BINGO mark on August 10, 2010. Since that time Complainant alleges that it has used the mark continuously for customers worldwide except for those in thirteen nations. Complainant further notes that it offers its services at its <bejeweledbingo.com> domain name, and has been given several awards for its gaming services as well as receiving millions of Internet users and memberships at its website. The Panel observes that Complainant’s evidence of common law rights in its BEJEWELED BINGO mark is sufficient under Policy ¶ 4(a)(i), thereby allowing Complainant to enforce its rights in such mark in this UDRP proceeding. The Panel observes that this Forum in its decisions in –

(i) Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (holding that “There is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”);

(ii) Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).

· Complainant argues that the <bejeweledbingozero.com> domain name is confusingly similar to its BEJEWLED BINGO mark under Policy ¶ 4(a)(i). Complainant contends that the domain name contains its BEJEWELED BINGO mark entirely while adding the generic or descriptive term “zero” and the generic top-level domain (“gTLD”) “.com,” and that such additions are not sufficient to render the domain name distinct from its mark. The Panel agrees and finds that the domain name in question is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where the domain name encompasses the entire mark, while removing the space between the terms, adds the generic term “zero” and adds the gTLD “.com.” The Panel observes that this Forum in its decisions in –

(i) Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (holding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name “americangenerallifeinsurance.com” is confusingly similar to the complainant’s AMERICAN GENERAL mark.”);

(ii) Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (holding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy 4(a)(i));

(iii) 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).

· The Panel also finds that respondent has not made any contention with regard to Policy ¶ 4(a)(i).

Rights or Legitimate Interests

· The Panel observes that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden to show that Respondent does have rights or legitimate interests in the disputed domain name shifts to Respondent. The Panel observes that this Forum in its decisions in –

(i) 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).

(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (holding that “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 argues that Respondent is not commonly known by disputed domain name or authorized to use Complainant’s BEJEWELED BINGO mark in any manner. Complainant points to the WHOIS information which shows that “Patrick Duffy” is the registrant of the domain name to argue that Respondent is not commonly known by the domain name in question. The Panel agrees and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), where there is no evidence on record indicating that Respondent is known by the domain name, including the WHOIS information. The Panel observes that this Forum in its decisions in –

(i) Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (holding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”);

(ii) IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (holding 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).

(iii) M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (holding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy 4(c)(ii) based on the WHOIS information and other evidence in the record);

(iv) St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

· Complainant goes on to argue that Respondent has not made an active use of the domain name since registering it in December of 2010. Complainant submits that the domain name resolves to a website that states, “This page has been reserved for future use” in bold black letters on a plain white background. Complainant argues that such inactivity, after more than four months of registration, of the domain name is evidence that Respondent does not have rights or legitimate interests in the domain name. The Panel has no doubt that the registration of the disputed domain name by the respondent, in the facts and circumstances of the present case, is not bona fide. In any case, the Panel agrees and finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel observes that this Forum in its decisions in –

(i) Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii));

(ii) TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (holding that “The Panel concludes that Respondent's failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy 4(a)(ii).”).

· The Panel further finds no substance or merit in the contention of the Respondent that it registered the disputed domain name to “protect his own bingo offers (especially Zero Bingo offerings)”. Similarly, the contention of the Respondent that it has rights and interests to protect its own offerings, and that Complainant could have registered the domain name itself if it was worried about a loss of customers, is neither bona fide nor permissible and deserves rejection. The Panel finds that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

· Complainant submits evidence indicating that Respondent has also registered other domain names containing others’ trademarks in addition to the term “zero” and a gTLD, while making no use of the domain names. Complainant submits such evidence to claim that Respondent is actively engaged in an abusive business practice of registering domain names containing others’ trademarks, and that such a pattern is evidence of bad faith registration and use in this instance. Complainant notes that the other domain name registrations also involve gaming and bingo game websites. The Panel finds that Respondent’s other domain name registrations that contain the trademarks of others’ is evidence of Respondent’s bad faith bad pattern of registration and use of the domain name in the instant proceeding under Policy ¶ 4(b)(ii). The Panel observes that this Forum in its decisions in –

(i) Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (holding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

(ii) Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (holding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).

· The Panel has no difficulty in accepting the contention of the Complainant that the essential features of its domain name have been bodily lifted and copied by the respondent in the disputed domain name – establishing beyond doubt that the registration of the disputed domain name by the respondent in this manner is a clear case of bad faith registration. The addition of ‘zero’ in the disputed domain name, in the facts and circumstances of the present case – the Panel finds, would not make any difference in coming to the conclusion that the registration of the disputed domain name by the respondent is in bad faith.

· Complainant argues that Respondent is not currently, nor has it ever, used the domain name in connection with an active website. Complainant alleges that the domain name resolves to a website that states, “This page has been reserved for future use” in bold black letters on a plain white background. The Panel finds that Respondent has failed to make an active use of the domain name, and that such failure is evidence of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). The Panel in this regard finds the following decisions to be relevant -

(i) Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith);

(ii) DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of 4(a)(iii) of the Policy).

· Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain name. Complainant contends Respondent must have known at the time of registering the domain name that Complainant had rights in the BEJEWELED and BEJEWELED BINGO marks, because of the nature of the domain name and made-up nature of Complainant’s mark. The Panel finds that Respondent has actual knowledge of Complainant's mark. The Panel also finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). The Panel observes that this Forum in its decisions in –

(i) Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (holding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights);

(ii) Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (holding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

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 <bejeweledbingozero.com> domain name be TRANSFERRED from Respondent to Complainant.

Maninder Singh, Panelist

Dated: June 18, 2011